Amicus Curiae Brief — Eldred v. Ashcroft

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No. 01-618 _

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IN THE

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Supreme Court of the United States

a ia es

ERIC ELDRED, et al., itiietins

—

JOHN 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 ASSOCIATION OF AMERICAN

PUBLISHERS, AMBERSON HOLDINGS LLC, RICHARD AVEDON,

THE GEORGE BALANCHINE TRUST, PETER BARTOK, BOOSEY

& HAWKES, INC., THE AARON COPLAND FUND FOR MUSIC, INC.,

EUROPEAN-AMERICAN MUSIC CORPORATION, THE GEORGE

GERSHWIN FAMILY TRUST, THE LEONORE S. GERSHWIN TRUST

FOR THE BENEFIT OF THE IRA AND LEONORE GERSHWIN PHIL-

ANTHROPIC FUND, THE LEONORE S. GERSHWIN TRUST FOR THE

BENEFIT OF THE LIBRARY OF CONGRESS, THE KEITH HARING

FOUNDATION, THE FREDERICK LOEWE FOUNDATION, INC.,

DAVID MAMET, GLEN ROVEN, AND THE KURT WEILL

FOUNDATION FOR MUSIC IN SUPPORT OF RESPONDENT

CHARLES S. SIMS,

Counsel of Record

JON A. BAUMGARTEN

FRANK P. SCIBILIA

BRUCE BOYDEN

PROSKAUER ROSE LLP

1585 Broadway

New York, New York 10036

(212) 969-3000

Attorneys for Amici Curiae

TABLE OF CONTENTS

Page

TABLE OF CITED AUTHORITIES ...........::cc:ccceesseeeeeeeeeeees lil

INTEREST OF AMICI CURIAE .........:ssccccsseseseeeseeeeeeesseneennnees l

SUMMARY OF ARGUMENT ............::ccsssssssssssssescscerseseneneees 2

GE eissessscsitaisteniitnesnnsttcisiinnaminnnniinnmnnneimmnnannens 3

I. THE CTEA DOES NOT VIOLATE THE

PERS T ADGIOGIINT oncccccevccccccescccsccccccssccssscnsecssessees 3

A. Copyright Itself Is The Engine Of Free

Expression And Provides The

Necessary Breathing Room For Free

GOO ........00secsevsecseccssocscesssesccsnvecseesosssoenssessees 3

B. Intermediate Review Is Not Applicable

Because Copyright Is A Law Of

General Application That Does Not

Restrict The Transmission Of Ideas.............. 10

wd Intermediate Scrutiny Would Be

Entirely Unworkable In The Copynght

BOBO 2..0.00000eressenrscrscecsenvorcsesocsecrssscsossnssenese 12

Il. HISTORY DOES NOT SUPPORT

PETITIONERS' ARGUMENT THAT THE

UNCONSTITUTIONAL OR WARRANTS

CLOSE REVIEW UNDER THE FIRST

PETITE TIALS AOE AC ATER TTT 15

A. The Framers Perceived No Tension

Between The Copyright Clause And

The First Amendment ..................cceeeceseeeseeees 15

B. The Framers Did Not Consider

Extensions Of Copyrights To Existing

Works To Be Unconstitutional ..................... 16

li ill

. & The Framers' Suspicion Of Monopolies

Is Irrelevant To The Issues Before This

D. The Framers Intended To Vest

Congress With The Authority To

Determine The Proper Term For

Cases

A&M Records, Inc. v. Napster,

239 F.3d 1004 (Sth Cir. 2001) ...........scccsecccccsssceseceeees 9

Ill. © REGARDING EXISTING WORKS,

PETITIONERS' ARGUMENTS WOULD Arcara v. Cloud Books, Inc.,

REQUIRE INVALIDATION OF NOT ONLY rr 11

THE CTEA BUT ALSO ANY PRIOR TERM Reber v. Selden

a a TT 8

OF COPYRIGHT, AND SUBSTANTIAL

RELIANCE INTERESTS WARRANT

Bloomer v. McQuewan,

REJECTION OF PETITIONERS'

S. cc 17

AEFI 6 Br crcctscennsesinenii 23 39 U.S. 399 (1852)

A. Petitioners’ Theory Implicates Not - Burrow-Giles Lithographic Co. v. Sarony,

Only The CTEA But Also Prior sens 17, 24

B. Substantial Reliance Interests Warrant

Campbell v. Acuff-Rose Music,

Rejection Of Petitioners' Arguments ......... 24 ce 8

S There Has Been A Great Deal Of Cohen v. Cowles Media,

Actual Reliance On The 1976 I ceneueeen 11

durational Extensions.........:.......scsccssseseseseees 27 Denver Area Telecomms. Consortium v. FCC,

CORCCE AIRING senonsesnsesssessienesnssliean 30 518 US. 727 (1996)voresinereersreernreerreeserrnsrsernnee wee

APPENDIX: Selected Copywritten Works, 1910- Eldred v. Reno,

SOS cossomensnssnisnninanntal becesssevssevssnsnenteenesepenniiis lap 239 F.3d 372 (D.C. Cir. 2001) ....cccccccseseseeseseseseeees 26

ADDEIIUNM: Aitldl Chmtse.ccnnnnnndnieme la

Feist Publ'ns, Inc. v. Rural Tel. Serv. Co.,

Ee 3,17

Festo v. Shoketsu Kinzoku Kogyo Kabushiki Co.,

__ US. __ , 122 S. Ct. 1831 (2002)... eeeeeeeeeees 26

Gertz v. Robert Welch, Inc.,

eee Sa ee iniiciideindsciksiitinirtindiisiipeiaiemenienianeaiia 10

Graham v. John Deere Co.,

Ee Oe Cee esternisteiesiadiiineiiastieieaentarnamatntshtedanteniaaaes 22

Harper & Row, Publishers, Inc. v. Nation Enters., Inc.,

Se es GI iecttereeiecneanncticinasietbnataniiidic passim

Heckler v. Matthews, :

Cee cnrcendistcintasinteienntceinsementntciniiianssitiiainti 27

Landgraf v. USI Film Prods.,

Se Ce See ecianienesinnianianinmneemcanantaientnaatl 26-27

Lee v. Runge,

Spe TS CIE ctilinsnsintntentinnitanisinsineaninaieiiianaadl 4

Legal Servs. Corp. v. Velazquez,

ee eas eee hinreteicinsecitenineiecennseainonaaiesineimancscisiiiai 10

Los Angeles News Serv. v. Tullo,

PO ee Fe ee Se irncrmnsnicaiitincinenaiés 8

Mazer v. Stein,

ee ee Ee Ge ciiicetnmintmeniinide 3

McCulloch v. Maryland,

5G Cats ee weccsestnnenenneniisemsiibintaaiupinanmatainaaies 14

Morrissey v. Procter & Gamble Co.,

ey Ce iitnnitenticrnintenstiiciasiantiins 8

New Era Publ'ns, Int'l ApS v. Henry Holt & Co.,

873 F.2d 576 (2d Cir. 1989),

cert. denied, 493 U.S. 1094 (1990) ..0........ccccccceseeeees 8-9

New Orleans v. Dukes,

Sy Ce ee eee rtetictanintiibintitiniaiainiaiien 27

New York Times Co. v. Sullivan,

hic hiciasenicnenginnannentantiinnnedtienaanie 10

New York Times Co. v. United States,

I, PITTI aisrisciccaicesternininenninpdncliantisninniisnniiogtion 3

Nordlinger v. Hahn,

Le, anne 27

Palazzolo v. Rhode Island,

BR CI cccicsisidiebrniicininanecnbitininediaiameidaans 27

Penn Cént. Transp. Co. v. New York City,

PE enn 27

Pennock & Sellers v. Dialogue,

ZS) a_i 14, 22

Radovich v. National Football League,

(yyy 27

Red Lion Broad. Co. v. FCC,

i fl 3

Roy Exp. Establishment v. Columbia Broad. Sys., Inc.,

627 F.2d 1095 (2d Cir.),

cert. denied, 459 U.S. 826 (1982) .........ccccccceececeeeeeeees 4

Rust v. Sullivan,

JS, 10

Salinger v. Random House, Inc.,

811 F.2d 90 (2d Cir.),

cert. denied, 484 U.S. 890 (1987)........ccccccecseeeeneeeeeeees 8

Sid & Marty Krofft Tel. Prods., Inc. v. McDonald's

Corp.,

562 F.2d 1157 (9th Cir. 1977) ........ccccccceeseeeeeeereneeennees 8

South Dakota v. Dole,

I 10

Stewart v. Abend,

EER ae ee CS 4

Toolson v. New York Yankees,

ES aT ee en ea lee 27

Turner Broad. Sys., Inc. v. FCC.

I a I is ocesincieisirtninciterentncis een 11-13

Turner Broad. Sys., Inc. v. FCC,

SSO U.S. 160 (1GB7).....ncccceceeccccccccccccceccccccccsscosseces 12-14

Twin Peaks Prods., Inc. v. Publications Int'l. Ltd.

996 F.2d 1366 (2d Cir. 1993) 0.0... eee cccccecceeeees y

Warner-Jenkinson vy. Hilton Davis Chem. Co..

ERR EE 9 ane a nae 26

Whitney v. California,

ESSE ee 4

Zacchini v. Scripps-Howard Broad. Co.,

I 7,10

Statutes

> Ee ne NCEE 17

og REESE ES oer TEAS 3

| __REEES REAR ea aries rene a nro PES ee Sr oe y

Sf 8 | Eee spctuanninnsianeneienineeatios l

Act for the Relief of Oliver Evans, 6 Stat. 70-71

aati lated a 17

Vil

Act of Nov. 16, 1785, reprinted in 8 PAPERS OF JAMES

MADISON (William T. Hutchinson et al. eds. 1962) ....... 16, 21

Copynght Act of 1790, 1 Stat. 124 (1790)... 17-18

Copynght Act of 1831, 4 Stat. 436 (1831) ............ 17-18

Statute of Anne, 8 Anne, ch. 9 (1710) (Eng.)............ 16-17, 20

Treatises and Other Authorities

1 ANNALS OF CONGRESS 451 (1789).............:cccccccccccceeeeeeeeees 15

1 D. & M. NIMMER, NIMMER ON COPYRIGHT (2002)............. 4

2 RODNEY A. SMOLLA, SMOLLA AND NIMMER ON

TTT TEAR AT 4-6, 10

3 JOSEPH STORY, COMMENTARIES ON THE CONSTITUTION

OF THE UNITED STATES (Boston, Hilliard, Gray & Co.

5 DEBATES IN THE SEVERAL STATE CONVENTIONS ON THE

ADOPTION OF THE FEDERAL CONSTITUTION

Tp 15

6 THE AMERICAN MUSEUM (1789)................cccceeececeeceeeeeeeeees 20

BRUCE W. BUGBEE, GENESIS OF AMERICAN PATENT AND

eg eee 17

Robert C. Denicola, Copyright and Free Speech:

Constitutional Limitations on the Protection of

Expression, 67 CAL. L. REV. 283 (1979)..........cceesseseseeees 4, 7-8

V1ll

EATON S. DRONE, A TREATISE ON THE LAW OF

PROPERTY IN INTELLECTUAL PRODUCTIONS IN GREAT

BRITAIN AND THE UNITED STATES (Boston, Little, Brown

a 19

Emi Pays Pounds 1].5m for Stake in Phil Collins Music

Publisher, THE INDEPENDENT, Nov. 4, 1999 ...000........c.eeeeeees 30

Geraldine Fabnkant, Turner To Sell MGM Assets,

Sas cI 29

Jane C. Ginsburg, et al., The Constitutionality of

18 CARDOZO ARTS & ENT. L.J. 651 (2000)..... 5, 23-25

ROBERT A. GORMAN AND JANE C. GINSBURG,

Alexander Hamilton, Report on Manufactures, in 10

PAPERS OF ALEXANDER HAMILTON (Harold C. Styrett et

Fe GE, Fe errcmncerntannectinninnnniimnnenaimninn 21

BRAY HAMMOND, BANKS AND POLITICS IN AMERICA,

FROM THE REVOLUTION TO THE CIVIL WAR (1957) .............. 20

OSCAR HANDLIN & MARY FLUG, COMMONWEALTH: A

STUDY OF THE ROLE OF GOVERNMENT IN THE AMERICAN

ECONOMY: MASSACHUSETTS, 1774-1861 (1969)................. 21

LOUIS HARTZ, ECONOMIC POLICY AND DEMOCRATIC

THOUGHT: PENNSYLVANIA, 1776-1880 (1948).................... 21

David D. Kirkpatrick, Media; Publishers and Libraries

Square Off Over Free Online Access to Books,

ORM 8 fe 29

Letter from Jefferson to Madison, Aug. 28, 1789,

available at

http://memory.loc.gov/ammem/mtjhome.html............... 19, 21

CHRISTINE MACLEOD, INVENTING THE INDUSTRIAL

REVOLUTION: THE ENGLISH PATENT SYSTEM,

ED cicniiciqeniusmnitninieaneminoamanmcnnenmamneie 21

Edward Rappaport, "Copyright Term Extension:

Estimating the Economic Values," Congressional

Research Service Report for Congress (May 11, 1998) ..28-29

Edward Samuels, The Public Domain in Copyright Law,

41 J. COPYRIGHT Soc'y U.S.A. 137 (1993) ..........04 24

Edward C. Walterscheid, Jnherent or Created Rights:

Early Views on the Intellectual Property Clause,

19 HAMLINE L. REV. 81. (Fall 1995) ............cccccceeeeees 20

GORDON S. WOOD, THE RADICALISM OF THE AMERICAN

PV OAI TIE CEG e Pecevcccsexcssesssscccescsensevesccssecsesssscsessossesees 19-20

INTEREST OF THE AMICI CURIAE

This brief supporting Respondent is submitted in opposi-

tion to the misplaced efforts of Petitioners and their amici to

obtain from the Court what they could not obtain from

Congress. Consents to this filing are lodged with the Clerk.

Amici are the nation’s trade associations of book

publishers, the Association of American Publishers (“AAP”),

and the composers, artists, and playwrights (or their heirs) of

some of the most celebrated and prized works of 20" Century

culture, who are identified more fully in the Addendum

below. They all depend on the rights secured by copyright

law to engage, in their various ways, in the creation and/or

dissemination of copyrighted works, to the larger public

benefit.’

Not all amici supported the enactment of the Copyright

Term Extension Act (“CTEA”). AAP, for example, took no

position due to the different positions that its members, the

nation’s leading publishers, had on the legislation, some

supporting and some opposing, depending on the nature of

their businesses. But all amici believe it important that

Congress be allowed to weigh the competing concerns and

make the policy judgments that the Copyright power

authorizes, and that Petitioners’ effort to have the courts

displace the congressional judgment will in the long run be

destructive of the Constitutional plan and congressional exer-

cise of its powers. Congress, not the Courts, is entrusted with

that responsibility and armed with the ability to balance

interests and make fine distinctions that is the essence of the

legislative, not the judicial, process.

When Petitioners and their amici first articulated to

Congress the arguments now made again here, Congress

considered them and altered the legislation accordingly. One

result of that process is 17 U.S.C. § 108(h), which responded

' No counsel for a party in this Court authored this brief in whole or in

part, and no person or entity, other than the amici curiae, made a monetary

contribution to the preparation or submission of the brief. Amici are

identified in an addendum attached hereto.

to concerns of some libraries — which continue to challenge

the CTEA even though their concerns were addressed — by

providing for use of works during the entire extension period

after reasonable investigation.

Amici fully support the importance of close First

Amendment review when First Amendment rights are threat-

ened. But neither the CTEA nor copyright law generally

threatens those nights. Generally supportive of the holding of

the D.C. Circuit and the argument of the Solicitor General as

to the power of Congress to have enacted the CTEA, we focus

here on Petitioners’ First Amendment argument, showing that

it is inconsistent with the traditional understanding of the

reconciliation of copyright and free speech doctrines and with

the history underlying the Copynght Clause and early

States, and on the threat that Petitioners’ arguments pose to

prior extensions and corresponding reliance interests.

SUMMARY OF ARGUMENT

Petitioners’ argument that the CTEA violates the First

Amendment ignores the First Amendment safeguards already

internalized in copyright law, and fails to explain why internal

protection previously considered adequate to protect First

Amendment rights is now insufficient. There is no authority

in this Court for subjecting copyright statutes to free-standing

First Amendment review, much less to intermediate scrutiny,

and considerable precedent arguing against the intermediate

review Petitioners seek to import. First Amendment

freedoms are essential, but the accommodation between

internal to copyright law, and, at least for traditional

Amendment intermediate scrutiny is both unnecessary and

unworkable.

Nor is history on Petitioners’ side. The Framers

perceived no conflict between the Copyright Clause and the

First Amendment, nor did they consider extending copynghts

in existing works unconstitutional. Petitioners further

misrepresent the grounds of the Framers’ concern with

“monopolies,” which was more the product of fears of

favoritism than the result of a desire to limit exclusive rights.

Petitioners offer no principled distinction between the

CTEA and previous congressional extensions of the term or

scope of copyright, and to accept their attack on the CTEA

would place the prior extensions in doubt and unsettle

countless investments and transactions entered in reliance on

prior extensions.

ARGUMENT

I THE CTEA Does NoT VIOLATE THE FIRST

AMENDMENT

A. Copyright Itself Is The Engine Of Free

Expression And Provides The Necessary

Breathing Room For Free Speech.

Petitioners’ argument rests on the erroneous premise that

The primary concern of the First Amendment is the free

flow of ideas.’ But “{c]opyright laws are not restrictions on

freedom of speech as copyright protects only form of

expression and not the ideas expressed.”

This so-called “idea-expression dichotomy” — the rule that

but merely prevents others from purloining an author’s

particular expression of those ideas — “strike[s] a definitional

balance between the First Amendment and the Copyright Act

by permitting free communication of facts while still

protecting an author’s expression.” Harper & Row, 471 U.S.

at 556. The idea-expression dichotomy nurtures and protects

2 See, e.g., Red Lion Broad. Co. v. FCC, 395 U.S. 367, 390 (1969)

(rationalizing freedom of speech as a means of “preserviing] an

uninhibited marketplace of ideas in which truth will ultimately prevail”).

. Harper & Row, Publishers, Inc. v. Nation Enters., Inc., 471 U.S. 539,

556 (1985), citing Justice Brennan’s concurrence in New York Times Co.

v. United States, 403 U.S. 713, 726 n. * (1971); see also 17 U.S.C. § -

102(b); Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349

(1991); Mazer v. Stein, 347 U.S. 201, 217 (1954).

the “marketplace of ideas.” On the one hand, the dichotomy

allows others to make use of, build upon and disseminate

ideas that have already been conceived; ideas are free for all

to use, and completely outside copyright protection. “The

marketplace of ideas would be utterly bereft, and the

democratic dialogue largely stifled, if the only ideas which

might be discussed were those original with the speakers.’”

On the other hand, the dichotomy also serves to foster the

creation and dissemination of new ideas, by securing income

streams to creators for their particular expressions for limited

periods. “It should not be forgotten that the Framers intended

lishing a marketable right to the use of one’s expression,

disseminate ideas.”

The free flow of ideas is vital to our democratic society

for three reasons. It educates and informs (the “enlightenment

function”).° It acts as “a safety valve against violent acts.”

And it serves as a means of “self-fulfillment,” or “an end in

itself.”"® Granting a monopoly, let alone a monopoly for

limited times, on the particular expression of an idea does no

harm to any of these purposes.

* 2 RODNEY A. SMOLLA, SMOLLA AND NIMMER ON FREEDOM OF

SPEECH [“SMOLLA”] § 21:5, at 21-8.2 (1996) (citing Lee v. Runge, 404

U.S. 887, 893 (Douglas J., dissenting)) (“The arena of public debate

would be quiet, indeed, if a politician could copyright his speeches or a

philosopher his treatises and thus obtain a monopoly on the ideas they

contained.”).

* Harper & Row, 471 U.S. at 558.

® 1 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT

(hereinafter “NIMMER”] § 1.10[1] (2002) (citing, inter alia, Whitney v.

California, 274 U.S. 357 (1927) (Brandeis, J. concurring)).

” Id. See also Robert C. Denicola, Copyright and Free Speech:

Constitutional Limitations on the Protection of Expression (hereinafter,

“Denicola”], 67 CAL. L. REV. 283, 286 (1979) (free speech “can act as a

stabilizing force in society in that it channels potentially disruptive energy

into a more useful public dialogue. . . .”) (also citing Brandeis’

concurrence in Whitney).

* NIMMER, supra, § 1.10{1]; Denicola, supra, at 286.

Any argument that extending copyright terms for

expression (not ideas) frustrates either the “safety valve” or

the “‘self-fulfillment” purpose of free speech can be quickly

rejected. “It is not likely that men will resort to violence

because they lack the legal nght to reproduce the expression

of another’””’ and “[o]ne who pirates the expression of another

is not thereby engaging in se/f-expression in any meaningful

sense.”'° As Professor Jane Ginsburg has written:

[Petitioners’] would like to avoid the rational

basis test, to put the [term] extension to a

higher standard. . . . [Petitioners’ argument is

that the] term extension has a deleterious

impact on speech; and once one pronounces

the word ‘speech,’ a higher level of scrutiny

attaches. But where is the ‘speech’ at issue

here? What Enc Eldred proposes to do is

recirculate other people’s speech. The First

Amendment is certainly about the freedom to

make your own speech. Whether it is about

the freedom to make other people’s speeches

again for them, I have some doubt. '!

The most vital of the three functions — the “enlightenment

function” — is also not harmed by the grant of a limited

exposure to ideas, and not to their particular expression, that

is vital if self-governing people are to make informed

decisions.”'* Professors Smolla and Nimmer offer this

example:

It is important that we have free access to the

ideas of both William F. Buckley and John K.

Galbraith; and everyone should have the right

SMOLLA, supra, § 21:5, at 21-11.

" &

'' Jane C. Ginsburg, et al., The Constitutionality of Copyright Term

Extension: How Long Is Too Long?, 18 CARDOZO ARTS & ENT. L.J. 651,

701 (2000) (emphasis added).

'2 SMOLLA, supra, § 21:5, at 21-10.

to disseminate Buckley’s and Galbraith’s

ideas, either by way of endorsement or

criticism. That process of enlightenment,

however, does not require the freedom to

reproduce without permission either Buckley’s

book Up From Liberalism or Galbraith’s The

Affluent Society. To reproduce the

‘expression’ of their ideas may add flavor but

relatively little substance to the data that must

inform the electorate in the decision-making

process. Such minimal substance, lost through

the copyright prohibition on reproduction of

expression, is far outbalanced by the public

benefit that accrues through copyright

encouragement of creativity.”'*

Courts have consistently protected copyrighted expression

from challenges that cite a First Amendment “need” or

“right” to use such expression. The most famous of these is

Harper & Row, where the Court rejected The Nation’s

argument that it had a First Amendment right to copy the

expression of former President Ford contained in his then

unpublished memoirs. Responding to the claim that Ford’s

expression was “essential to reporting the news story,” the

Court held:

lish factual narratives . . . that they may at least

enjoy the right to market the original ex-

pression contained therein as just ~

compensation for their investment. ... In

view of the First Amendment protections al-

ready embodied in the Copynght Act’s

distinction between copyrightable expression

and uncopyrightable ideas, and the latitude for

scholarship and comment traditionally afford-

ed by fair use, we see no warrant for

expanding the doctrine of fair use to create

3 Id. § 21:5, at 21-10 - 21-11.

what amounts to a public figure exception to

The Court’s rejection of the First Amendment challenge

in Harper & Row mirrored and relied on its approach eight

years earlier in Zacchini v. Scripps-Howard Broadcasting

Co., 433 U.S. 562 (1977).'* Zacchini had brought a damages

action against a television broadcasting company that

videotaped and broadcast his “human cannonball” act in its

entirety, without consent. The Court held that a damage

award for infringement of Zacchini’s property interest in the

publicity value of his performance did not violate the

broadcaster’s First Amendment rights, because protecting that

property interest would not seriously curtail public access to

or discussion of Zacchini’s performance. Indeed, the Court

noted that protecting his interest would encourage Zacchini to

continue to perform the act, and thereby serve the public

interest.'° Finding satisfactory “the internal limits of the right

of publicity”'’ and observing that granting Zacchini a

monopoly on the performance (in the form of a nght of

publicity) would not prevent the defendant from reporting the

facts surrounding Zacchini’s act, the Court rejected the First

Amendment defense. '*

Dispositively, although First Amendment claims were

raised in both Zacchini and Harper & Row, the Court applied

“intermediate scrutiny” in neither, but rather rejected the First

Amendment challenges on a categorical basis after conclud-

ing that neither infringement claims nor right of publicity

claims threaten the traffic in ideas.

'* 471 U.S. at 556-60 (emphasis added).

'S See 471 U.S. at 557, citing 433 U.S. at 575.

‘© 433 U.S. at 573. Thus, the Court viewed the property interest in the

act, like a copyright interest, as an engine of free expression. See id.

(“(T}he State’s interest [in recognizing a right of publicity] is closely

analogous to the goals of patent and copyright law, focusing on the nght

of the individual to reap the reward of his endeavors. . . .”).

'7 Denicola, supra, at 288.

433 U.S. at 574.

In sum, the idea-expression dichotomy, in copyright and

related cases, appropriately accommodates free speech

concerns.'” And for any cases where “the values inherent in

the rights of free speech and free press demand more than

access to abstract ideas” and require “the use of the particular

form of expression contained in a copyrighted work,””°

_ First Amendment, offers additional internal protections to

protect free speech without the application of intermediate

scrutiny.

First, under the “substantial similarity test,” a speaker’s

use of a minimal amount of expression will generally not be

actionable absent “substantial similarity” between the new

work and the original work.

Second, where the information sought to be

communicated and the mode of its expression are so

intertwined that the one cannot be conveyed without the

other, the expression is considered: “merged” with the

uncopyrightable idea.”'

Third, and most importantly, the fair use Guanes also

guarantees “breathing space within the confines of copyright

{law].” Campbell v. Acuff-Rose Music, 510 U.S. 569, 579

(1994) (emphasis added). As Harper & Row recognized, the

doctrine of fair use serves as an additional, broadly applicable

Other courts have reached the same conclusion. See, e.g., Salinger v.

Random House, Inc., 811 F.2d 90, 100 (2d Cir.) (“To deny a biographer

... the opportunity to copy the expressive content of unpublished letters is

not . . . to interfere in any significant way with the process of enhancing

public knowledge of history or contemporary events. The facts may be

reported.”), cert. denied, 484 U.S. 890 (1987); New Era Publ'ns, Int'l ApS

v. Henry Holt & Co., 873 F.2d 576, 584 (2d Cir. 1989) (“An author’s

expression of an idea, as distinguished from the idea itself, is not

considered subject to the public’s ‘right to know.””), cert. denied, 493

U.S. 1094 (1990); Sid & Marty Krofft Tel. Prods., Inc. v. McDonald's

Corp., 562 F.2d 1157, 1170 (9th Cir. 1977) (same); Los Angeles News

Serv. v. Tullo, 973 F.2d 791, 795 (9th Cir. 1992) (same).

2° Denicola, supra, at 293.

*! See e.g., Baker v. Selden, 101 U.S. 99 (1879); Morrissey v. Procter &

Gamble Co., 379 F.2d 675 (1st Cir. 1967).

eS ee oe

safeguard against any interference of copyright law with

constitutionally protected speech.” The doctrine of fair use,

codified in Section 107 of the Copyright Act, “tempers the

protection of copyright by allowing an author to use a limited

amount of copynghted material” when copyright law might

otherwise “stifle the very creativity which that law is

designed to foster.””*

Petitioners’ attempts to distinguish Harper & Row and its

progeny rely on wishful thinking, not persuasive analysis. If,

as Petitioners all but concede, Harper & Row establishes “a

presumption against the need to engage in a First Amendment

analysis every time a copyright owner seeks to enforce his

should apply when the challenge is to the CTEA on its face

(rather than to the 1976 Act “as applied”). Petitioners offer

no principled reason why intermediate scrutiny is unnecessary

for as-applied challenges (as this Court and every Circuit

court that has addressed the issue has held), but necessary for

facial challenges.

22 Harper & Row, 471 U.S. at 560 (“In view of the First Amendment

protections already embodied in the Copyright Act’s distinction between

latitude for scholarship and comment traditionally afforded by fair use, we

see no warrant for expanding the doctrine of fair use to create what

amounts to a public figure exception to copyright.”). Circuit court rulings

are in accord. See, e.g., Roy Exp. Co. Establishment v. Columbia Broad.

Sys., Inc., 672 F.2d 1095, 1099 (2d Cir.) (“[nJo Circuit that has considered

the question . . . has ever held that the First Amendment provides a

privilege in the copyright field distinct from the accommodation embodied

in the ‘fair use’ doctrine”), cert. denied, 459 U.S. 826 (1982); New Era

Publ'ns, Int'l, 873 F.2d at 584 (“the fair use doctrine encompasses all

claims of first amendment in the copyright field”); A& M Records, Inc. v.

Napster, Inc., 239 F.3d 1004, 1028 (9th Cir. 2001) (“First Amendment

concerns in copyright are allayed by the presence of the fair use

doctrine.”).

3 Twin Peaks Prods. v. Publications Int'l, 996 F.2d 1366, 1373 (2d Cir.

1993).

** — Stewart v. Abend, 495 U.S. 207, 236 (1990).

B. Intermediate Review Is Not Applicable Because

Does Not Restrict The Transmission Of Ideas.

Because copyright law internally provides the necessary

breathing room for free speech, see Harper & Row and

Campbell, “the present reach of the copyright law is such that

its full scope should be ‘defined’ as outside the First

Amendment sphere.””° That is the approach the Court has

taken, as Harper & Row and Zacchini reflect. And because

facial challenges to statutes ordinarily draw no different

standard of First Amendment review from “as-applied”

challenges, the refusal to apply intermediate scrutiny in those

cases should be controlling.

The Court’s refusal to apply intermediate scrutiny in

Harper & Row and Zacchini flowed directly from its view of

its enemy, and was consistent as well with various other lines

of cases in which intermediate (or stricter) scrutiny has not

been, but under Petitioners’ theory should have been, applied.

“Intermediate” and “strict” scrutiny are not all-purpose

tests applicable to every claim that a statute has, either

intentionally, predictably or incidentally infringed First

Amendment rights. Sui generis approaches (rather than

“strict” or “intermediate” scrutiny) have been applied, not

only in copyright and right of publicity cases such as Harper

— Row and Zacchini, but also in funding cases,”° defamation

” and cases involving the competing rights of cable

access programmers and cable operators.2* Members of the

Court have frequently observed that different tools are

25 SMOLLA, supra, at 21-5.

500 U.S. 173 (1991); Legal Servs. Corp. v. Velazquez,, 531 U.S. 533

(2001).

7 E.g., New York Times Co. v. Sullivan, 376 U.S. 254 (1964); Gertz v.

Robert Welch, Inc., 418 U.S. 323 (1974).

%* Denver Area Educ. Telecomms. Consortium v. FCC, 518 U.S. 727,

739-42 (1996).

required in cases where competing First Amendment interests

are at stake.” The considerations that underlay the

formulation of situation-specific tools, sensitive to the com-

peting interests in all those situations, in lieu of the residual

“strict” and “intermediate” scrutiny tools applied elsewhere,

support the categorical approach adopted in Harper & Row.

Rejection of Petitioners’ invitation to apply intermediate

scrutiny is supported as well by the Court’s refusal to apply

such scrutiny to regulations that govern non-expressive

conduct and do not impose meaningful burdens on speech.

See, e.g., Cohen v. Cowles Media Co., 501 U.S. 663 (1991),

and Arcara v. Cloud Books, Inc., 478 U.S. 697 (1986).

at issue in Cohen or the public lewdness law applied in

Arcara, are generally applicable laws that do not target or

single out the press and/or speech itself and apply to myriad

“daily transactions” of Americans generally. Cohen, 501 U.S.

at 670. Indeed, in refusing to apply intermediate scrutiny,

Cohen reasoned that the “press, like others interested in

publishing, may not publish copyrighted material without

obeying the copyright laws,” and concluded that

“enforcement of such general laws . . . is not subject to

stricter scrutiny.” 501 U.S. at 669-70.

We all are subject to copyright laws; we all have a duty

not to infringe established intellectual property rights through

such unlawful conduct as copying, misappropriation, public

displays, and the production of derivative works. So long as

these laws are not used to punish or prevent the expression of

ideas or opinions, only rationality review need be applied.

Petitioners ask this Court to apply the heightened level of

intermediate scrutiny of Turner Broadcasting System, Inc. v.

FCC.’ However, the reasons for applying intermediate

scrutiny in that case (“Turner I’) do not exist in the copyright

context. The CTEA does not, as the 1992 Cable Act did,

require some speakers to carry the message of others

29 Id. at 743-44 (Breyer, J., concurring).

(broadcast stations) at the expense of still others (cable

programmers), thereby “impos[ing] special obligations upon

eee tors and special burdens upon cable program-

ers.” Neither the CTEA nor copyright law generally

“single{s] out the press, or certain elements thereof [cable

programmers] for special treatment,” thus “pos[ing] a

particular danger of abuse by the State.”””

whether for a term of one year or ninety years, it does not

even arguably require some speakers to carry the message of

others. Unlike FCC regulations which apply to discrete and

identifiable ~arties like cable-network stations, copyright is a

generally applicable law reaching everyone who copies.

Whether for a term of life plus fifty years or life plus seventy,

press or on anyone else. The press, along with every other

institution and every individual, is equally free to use the

ideas embodied in a copyrighted work of authorship, and

equally constrained to refrain from appropriating protected

expression during the term Congress has set. If a term of fifty

years does not offend the First Amendment, it is hard to see

why the CTEA’s terms do.

C. Intermediate Scrutiny Would Be _ Entirely

Unworkable In The Copyright Sphere.

Intermediate scrutiny of the sort applied in Turner

Broadcasting System, Inc. v. FCC, 520 U.S. 180 (1997)

(“Turner IJ’’), is inconsistent with the analysis in Harper &

Row, and far too blunt a tool to be workable as applied to the

CTEA or to copyright law generally; indeed, if rigorously

applied, numerous provisions of copyright law might be

found wanting. The point is not that copyright law is

violative of the First Amendment — it surely is not — but that

the test Petitioners would have the courts apply leads to such

absurd results as to confirm that it must be rejected.

| Id. at 641.

2 Id. at 640.

First, the very premise underlying Harper & Row was that

the communication of ideas or free speech. But intermediate

scrutiny of the sort required by 7urner / is called for only if

the statute challenged does burden speech.’ The invitation to

apply Turner J is at war with Harper & Row.

Second, it is hard to see how Turner analysis can be

applied in a principled, predictable way that would not lead to

the invalidation (at least by lower courts) of numerous

provisions of copyright law. In Turner JI, it was easy for the

Court to articulate the relevant interests on both sides and to

evaluate Congressional findings based on statistics, audience

behavior, economic principles and broadcast history.

However, copyright terms like “progress of science and the

useful arts” and “limited times” resist meaningful 7urner

review.

Evaluating more or less restrictive means would be

judicially unmanageable. Congress has for centuries applied

that scope of coverage “burdens substantially more speech

than is necessary” to further “the progress of science and the

useful arts”? Or whether any challenged provision of

extensions of copyright like the Digital Performance Right in

Sound Recordings Act of 1995, or the extension of copyright

to photographs “burdens substantially more speech than

necessary to further” Congress’s legitimate objectives? Must

Congress have compiled a record with “evidence” supporting

those judgments, and myriad others, for courts to pass on,

even though neither the first Congress nor later Congresses

enacting extensions did so?

both economic principles and the psychology of innovation,

and has rested since the Statute of Anne on legislative

judgments regarding incentives and public needs. To subject

those legislative determinations to the inquiries reflected in

> See Point L.B., infra at 10-12.

Turner IJ would work a revolution in the ways that Congress

approaches copyright revision, and unreasonably interfere

with the legislature’s exercise of its Article I, § 8 power.

Unlike cable television in the 1990s (still a relatively

novei form of communication), copyright laws have existed

in relatively the same basic form since the 1790s, and

substantial reliance interests have arisen (discussed more fully

in Point III below). Although cable television’s youth

permitted judicial fine-tuning without much fear of destabil-

ization, introducing intermediate scrutiny to copyright now

would threaten the entire system, unsettle established expecta-

tions, and risk creating substantial economic instability.

As in cases involving Congress’s enumerated Article I

powers generally, the Court should uphold copyright laws so

long as the limitations of Article I are respected, Congress is

pursuing a legitimate governmental objective, and the means

chosen are rationally related to that objective. The Framers

crafted the “limited times” provision in the Copyright Clause

to give future Congresses appropriate authority in meeting the

experiential demands of passing generations. So long as

Congress does not pass laws prohibited under its enumerated

powers, for the Court “to undertake here to inquire into the

degree of its necessity would be to pass the line which

circumscribes the judicial department, and to tread on legis-

lative ground.”** Simply stated, “limited times” is a question

of degree. Applying rationality review would categorically

rule out perpetual copyrights and would rationally rule out

thousand year terms, but leave Congress with the necessary

flexibility to make the necessary assessments, through the

political process, concerning demographics, international

markets and artistic capital. *°

** McCulloch v. Maryland, 17 U.S. 316, 423 (1819).

*° See Pennock & Sellers v. Dialogue, 27 U.S. 1 (1829) (duration is

subject to the discretion of Congress, although Congress may not, under

Articie I, Section 8, confer intellectual property rights of unlimited

duration).

Il. HistorY Does Not SUPPORT PETITIONERS’ ARGU-

MENT THAT COPYRIGHT TERM EXTENSION IS UNCON-

STITUTIONAL OR WARRANTS CLOSE REVIEW UNDER

THE FIRST AMENDMENT

A. The Framers Perceived No Tension Between The

The Framers perceived no conflict between the Copyright

Clause and the First Amendment. The Copyright Clause was

not controversial; it was one of few clauses that the

Constitutional Convention adopted without debate.°° Two

years later, when James Madison introduced the Speech

Clause of the First Amendment in the House of

Representatives, no member of Congress argued that the First

Amendment was in tension with the Copyright Clause’s

protections of intellectual property.”’ The Framers en-

trenched the people’s “right to speak, to write, [and] to

publish their sentiments,” but did not conceive of free speech

as impinging upon proprietary or other rights (or vice

versa).*® Madison himself, as a member of the first Congress,

voted for the Copyright Act.

Nor did any conflict between the two clauses manifest

itself for many years after the adoption of the First

Amendment. For example, nowhere in his landmark 1833

Commentaries on the Constitution of the United States did

Justice Joseph Story perceive any incompatibility between

“depredation and piracy” fell neatly outside the recognized

limits to speech rights in the First Amendment: “[T]he

language of this amendment imports no more, than that every

man shall have a right to speak, write, and print his opinions

upon any subject whatsoever, without any prior restraint, so

always, that he does not injure any other persons in his rights,

36 5 DEBATES ™ THE SEVERAL STATE CONVENTIONS ON THE ADOPTION

OF THE FEDERAL CONSTITUTION 510-11 (J. Elliot ed. 1859).

37 See, e.g., 3 JOSEPH STORY, COMMENTARIES ON THE CONSTITUTION OF

THE UNITED STATES § 44 (Boston, Hilliard, Gray & Co. 1833).

38 1 ANNALS OF CONG. 451 (1789) (proposal by Madison).

person, property, or reputation.””” While “every freeman has

an undoubted nght to lay what sentiments he pleases before

the public,” Story observed, he must, “if he publishes what is

improper, mischievous, or illegal,” accept “the consequences

of his own temerity.””°

B. The Framers Did Not Consider Extensions Of

Copyrights To Existing Works To Be

Unconstitutional.

The history of copyright in the early years of the Republic

also confirms that the Framers did not doubt the

constitutionality of extending copyrights in existing works.

Indeed, Congress made such “retroactive” extensions of

intellectual property rights thirteen times in its first sixty-three

years, including in the Copyright Act passed by the First

Congress in 1790.

Extensions of copyright to existing works were a regular

feature of copyright legislation throughout the eighteenth

century. The Statute of Anne, which, like the Copyright

Clause, declared its purpose to be for “the encouragement of

learning,” extended copyright protection of twenty-one years

from the date of publication to works published prior to its

enactment, while subsequently published works received

year term if the author survived the original term.*’ Under the

Articles of Confederation, several states adopted copyright

statutes that similarly extended protection to existing works.

For example, Madison introduced legislation in the Virginia

House of Delegates in 1785 that granted authors copyrights of

twenty-one years in books or pamphlets “already printed.”

Massachusetts, New Hampshire, Rhode Island, and South

3 STORY, supra, § 1874.

“Id. § 1878.

*! 8 Anne, ch. 19 (1710) (Eng.).

“ Act of Nov. 16, 1785, reprinted in 8 PAPERS OF JAMES MADISON 418-

19 (William T. Hutchinson et al. eds. 1967).

Carolina also extended copyrights to existing published

works.”

In 1790, Congress adopted the first copyright statute

under the new Constitution. Like the Statute of Anne, the Act

of 1790 was styled “An Act for the encouragement of

learning ....” The Act granted a copyright of fourteen years

for new works, and fourteen years from the date of recording

for “any map, chart, book or books already printed within

these United States” to the author or to the author’s

“executors, administrators or assigns.”* By choosing the

Statute of Anne’s retroactive form over some state regimes

that protected new works only, Congress made especially

clear its endorsement of extending copyrights to existing

works. The First Congress’s interpretation of its Copyright —

Clause authority is entitled to “very great weight.”*°

Congress repeatedly extended intellectual property nghts

retroactively over the following two centuries. In 1808, for

example, Congress extended the patent of Oliver Evans by

fourteen years when Evans was deprived of much of the

enjoyment of his patent rights due to an administrative error.*°

In 1828, Congress extended a copyright belonging to James

Rowlett.’ In 1831, Congress passed a new copyright statute,

* See BRUCE W. BUGBEE, GENESIS OF AMERICAN PATENT AND

Pennsylvania, North Carolina, Georgia, and New York did not extend

copyrights to newly published works.

“ Copyright Act of 1790, 1 Stat. 124 (1790).

5 Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 57 (1884).

“© See An Act for the Relief of Oliver Evans, 6 Stat. 70-71 (Jan. 21,

1808); see also Bloomer v. McQuewan, 55 U.S. 539, 543 (1852) (listing

additional patent extensions).

‘7 6 Stat. 389-90 (May 24, 1828). One amici brief argues that Rowlett’s

rejected in Feist Publications, Inc. v. Rural Telephone Service Co., 499

U.S. 390 (1991). See Br. Amici Curiae of Tyler T. Ochoa, et al. [hereafter

“Ochoa Br.”], at 24. The issue, however, is not the validity of Rowlett’s

that they had authority to extend the copyrights of already published

works.

requiring recordation of copyrights, and lengthening the

initial terms of new and existing copyrights to twenty-eight

years.** The Copyright Act of 1909 likewise extended the

existing works,” followed by the Copyright Act of 1976,

which extended the term for new and existing works by

various formulae intended to approximate the new standard

term of life of the author plus fifty years.

Petitioners and their amici contest the force of these

precedents; they argue, in essence, that the Act of 1790 was

too early to constitute a retroactive extension, but that all of

the subsequent legislation occurred too late to reflect the

Constitution’s original meaning. But neither end of that vise-

grip argument has force. The 1790 extension of rights in

existing works demolishes Petitioners’ argument notwithstan-

ding that those prior works were copyrighted under state law,

and the subsequent extensions cannot be dismissed as too late

to count when they are part of an impressive, unbroken chain:

virtually every significant piece of copyright legislation

adopted in Britain and the United States between 1700 and

1996 extended additional copyright protection to previously

published works.

C. The Framers’ Suspicion of Monopolies Is

Irrelevant To The Issues Before This Court.

Lacking direct historical support for their claims,

Petitioners analogize the CTEA’s supporters to the corrupt

British ministers who vexed the Framers and the London

booksellers despised by Milton.*’ But Petitioners misrepre-

sent both the real object of the Framers’ concern and the

extent to which the Framers shared it.

The argument that the Framers so abhorred monopoly

powers — which Petitioners implicitly define as any grant of

“* Copyright Act of 1831, 4 Stat. 436 (1831).

* Copyright Act of 1909, 35 Stat. 1075 (1909).

%° See Pet’r Br. at 27 nn. 10 & 11; Ochoa Br. at 29-30.

Re, ec ee errr he

exclusive rights, including copyrights and patents’’ — that

they came close to banning all monopolies relies almost

exclusively on a selection of quotations from Thomas

Jefferson, unsurprisingly, for among the Framers, Jefferson

had some of the most alarmist views about monopolies.”

And Jefferson did indeed propose a constitutional amendment

that would have prohibited the granting of any government

monopoly, and inserted 1 in the Constitution a specific term for

patents and copyri ights.”°

Petitioners’ reliance on the “monopoly” issue, however, is

misplaced. When they spoke of “monopolies,” the Framers

did not mean what we would mean by the term today; rather,

they referred to the reviled practice by which the British

Crown granted numerous favors to wealthy individuals.”

This arbitrary, corrupt system extended to the granting of

patents and the licensing of books. Exclusive rights were

granted to businesses, and laws such as the Licensing Act of

Charles II were passed to invest selected publishing compan-

ies with the power to control the press to the Crown’s

benefit.”

But the problem was not limited to or focused on intel-

lectual property. Favorites of the Crown were given colonial

governorships, judicial office, and lucrative business opportu-

nities of all kinds. “These corporate privileges were not fre-

quently granted or widely available; they were made at the

initiative of the government, not private interests.” Indeed,

*! See Pet’r Br. at 25-26.

2 See GORDON S. Woop, THE RADICALISM OF THE AMERICAN

REVOLUTION 320 (1991) (contrasting Jefferson’s belief that corporate

grants should be limited with the actual practice of state legislatures).

3 Letter from Jefferson to Madison, Aug. 28, 1789, available at

http://memory.loc.gov/ammem/mtjhtml/mtjhome.html.

* See WOOD, supra, at 82, 318-19.

5S EATON S. DRONE, A TREATISE ON THE LAW OF PROPERTY IN

INTELLECTUAL PRODUCTIONS IN GREAT BRITAIN AND THE UNITED STATES

54-56 (Boston, Little, Brown & Co., 1879). “The declared purpose of the

Stationers’ Company,” for example, “was to prevent the propagation of

the Protestant Reformation.” /d. at 55-56.

the South Sea Bubble, whose collapse in 1720 precipitated a

severe economic crisis in England, with fortunes ruined and

revelations of widespread corruption among the directors and

their cronies at Westminster, resulted from such politically

bestowed monopolies.” |

By the time of the Revolution, many in both England and

America came to regard such practices as hopelessly corrupt.

Beginning in the early seventeenth century, Parliament began

taking action against some of the more egregious abuses. For

example, in 1624 Parliament passed the Statute of

Monopolies, which abolished several forms of monopoly, and

limited patents to twenty-one years for existing patents and

fourteen years for new ones. The Statute of Anne, by vesting

initial copyright in authors and limiting the terms, was in

some ways a response to earlier laws such as the Licensing

Act.

The Framers were part of this reform effort. Drawing on

the lessons of the South Sea Bubble and other instances of

British “corruption”, they believed strongly that the govern-

ment should not be allowed to bestow special favors to a few

that were not available to all. It was for this reason that

Elbridge Gerry and George Mason refused to sign the

Constitution, and four states during the ratification debates

sought restrictions prohibiting the granting of “exclusive

advantages of commerce.””’

But the “monopolies” Gerry and Mason opposed were

discretionary grants of authority to powerful individuals, not

all forms of exclusive rights. And even so, many Framers

understood such “monopolies” to be essential, in the absence

of a powerful central government, to building internal

improvements, creating banks, and undertaking other

°° See WOOD, supra, at 319. On the South Sea Bubbie crisis, see

generally BRAY HAMMOND, BANKS AND POLITICS IN AMERICA, FROM THE

REVOLUTION TO THE CIVIL WAR (1957). :

*” Edward C. Walterscheid, Inherent or Created Rights: Early Views on

the Intellectual Property Clause, 19 HAMLINE L. REV. 81, 91 (quoting 6

THE AMERICAN MUSEUM 303 (1789)); see also Ochoa Br. at 19.

necessary enterprises.’ Thus, Congress did not adopt

Jefferson’s proposal to prohibit all monopolies except patents

and copyrights.*” Madison, Benjamin Franklin and James

Wilson all proposed adding a provision to Article I, Section 8,

granting Congress the authority “to grant charters of

incorporation where the interest of the U.S. might require &

the legislative provisions of individual States may be

incompetent,” so that Congress might build canals,

universities or other improvements.

The Framers were even less concerned about

“monopolies” over books and inventions. As Hamilton

observed in his Report on Manufactures, “(t]he propriety of

stimulating by rewards, the invention and introduction of

useful improvements, is admitted without difficulty.”

Madison noted in the Federalist No. 43, that the “utility” of

the Copyright “power will scarcely be questioned.” The

relative lack of controversy over the granting of “monopolies”

to reward authors and inventors was no doubt due to the

belief, widely shared by the Framers, that “[wjhile a

monopoly was conceived as consisting ‘in restraining the

common right,’ there was no unjust encroachment in the case

of invention since nothing had existed previously.”

It is thus correct, as Petitioners and amici have argued,

that the Framers were deeply concerned with “monopolies,”

but incorrect that this concern supports their challenge. The

Framers’ primary concern with respect to copyrights, as with

all monopolies, was that they be available to all and not

abused for partisan ends. Even Ochoa, Rose, and Walter-

8 See generally, e.g., OSCAR HANDLIN & MARY FLUG, COMMON-

WEALTH: A STUDY OF THE ROLE OF GOVERNMENT IN THE AMERICAN

ECONOMY: MASSACHUSETTS, 1774-1861 (1969); Louis HARTZ, Eco-

NOMIC POLICY AND DEMOCRATIC THOUGHT: PENNSYLVANIA, 1776-1880

(1948).

See Letter from Jefferson to Madison, Aug. 28, 1789, supra.

* Alexander Hamilton, Report on Manufactures, in 10 PAPERS OF

ALEXANDER HAMILTON 338-40 (Harold C. Styrett et al. eds. 1961).

6! CHRISTINE MACLEOD, INVENTING THE INDUSTRIAL REVOLUTION:

THE ENGLISH PATENT SYSTEM, 1660-1800, at 183 (1988).

scheid admit as much: the Copyright Clause, in their view,

“appears to have been aimed at preventing the kinds of abuses

that had prompted the Statute of Monopolies one hundred and

fifty years earlier.” Petitioners have therefore placed the

emphasis on the wrong word in the Copyright Clause. The

Framers did not iuwtead to require courts to hold copyright

legislation to a specific standard of “progress;” rather, they

intended to limit the purposes for which copynght legislation

might be passed to the promotion of “the Useful Arts,” as

opposed to the promotion of political patronage, or of the

President’s religious views.® Given that copyrights are avail-

able to all authors, and that the benefits of the CTEA apply

equally to all copyrights, the Framers’ concerns with

discretionary “monopolies” are simply not implicated by the

CTEA.

D. The Framers Intended To Vest Congress With

The Authority To Determine The Proper Term

For Copyrights.

The Framers gave Congress discretion to adapt to changed

circumstances by setting the boundaries of copyright,

including its term. Had they intended otherwise, they would

have adopted Jefferson’s suggestion of limiting copynghts to

a constitutionally specified term. Since they did not, this

Court was correct in demarcating the proper term for copy-

rights and patents as “subject to the discretion of Congress.

® Ochoa Br. at 17.

* See Graham v. John Deere Co., 383 U.S. 1, 5 (1966).

* Pennock & Sellers, 27 U.S. at 16-17.

III. REGARDING EXISTING WORKS, PETITIONERS’

ARGUMENTS WOULD REQUIRE INVALIDATION OF NOT

ONLY THE CTEA BuT ALSO ANY PRIOR TERM

EXTENSIONS AND OTHER EXPANSIONS OF COPYRIGHT,

AND SUBSTANTIAL RELIANCE INTERESTS WARRANT

REJECTION OF PETITIONERS’ ARGUMENTS

A. Petitioners’ Theory Implicates Not Only The

CTEA But Also Prior Copyright Extensions And

Changes.

Petitioners argue that the “retroactive” extension of the

term of pre-existing works violates the “Limited Times”

requirement of the Copyright Clause. To begin with, the

CTEA is not “retroactive” because it retrieves no works

already in the public domain, but rather, merely “disappoints

the expectation that the work was going to go into the public

domain at the end of 1998, as opposed to twenty years

thereafter." But, if the public has a vested interest of a

constitutional dimension in a work falling into the public

domain on an expected date, “then it follows that every term

extension after 1790 is constitutionally infirm.” Indeed, if

one accepts Petitioners’ logic, “[p]jerhaps the public had a

vested interest in the public domain being whatever the

subject matter and scope of copyright was at the time that

each of those works was created. That would mean, for

example, that any sound recording created before enactment

of the Digital Performance Right in Sound Recordings Act of

1995 should not enjoy such a performance right today.”®”’

And it would mean, for example, that Congress’ decision to

include photographs in the definition of copyrightable subject

matter was unconstitutional, and that Burrows-Giles

Lithograph was wrongly decided.

Conceding, as they must, that “a rule against retroactive

Acts, and possibly the 1976 Act,” Petitioners proffer a basis

to distinguish the CTEA from prior extensions: the CTEA

extension is automatic, they say, while the 1831 and 1909

extensions were contingent on registration, renewal, or the

like. Pet’r Br. 30 n.13. Petitioners do not explain why the

presence or absence of these pro forma requirements bears

any relevance to the constitutionality of retroactive copyright

extensions, and the 1976 extension, which Petitioners

conspicuously fail to mention in their footnote, was

automatic. Petitioners entirely fail to demonstrate how the

CTEA or prior extensions “can be distinguished from the

CTEA,” id., and in considering their arguments the Court

must consider the extent to which those arguments would

upset a huge range of existing rights resting on prior

durational and other changes in copyright law.

B. Substantial Reliance Interests Warrant Rejection

Of Petitioners’ Arguments.

For twenty-five years, artists and executives in the music,

film, print, and other industries have done business on the

understanding that the rights Congress granted them in 1976,

and before and after as well, were settled and secure.

Reliance on those rights undergirded innumerable

transactions concerning tens of thousands of works and

hundreds of millions of dollars. As Professor Arthur Miller

notes:

* See also Edward Samuels, The Public Domain in Copyright Law, 41

omitted) (“When Congress...expanded the scope of copyright to include

the right of public display (presumably applying to existing works as

well), or of public performance or musical works whether or not for profit,

or added the cable compulsory license, or added certain moral rights for

visual artists in 1990, [it] affected existing as well as future works....”).

We have enormous industries that invest

millions of dollars into works of expression —

from books to phonograph records, television

shows, motion pictures and Internet systems.

That is the way we disseminate copyrighted

works, and thank goodness — because that ena-

bles us to disseminate not simply on Fifth

Avenue and Forty-Second Street, but to the

four corners of the globe through the Internet.

That takes money. It takes capital. You must

attract capital into the copyright industries or

you will not achieve the purposes of the Copy-

right Clause. You attract capital by making

sure those industries have a rate of return. It is

not simply Hawthorne sitting at his desk with a

quill. We have to provide incentives for a

whole raft of people and industries to invest

capital in order to promote the progress of

science and the useful arts.... We must

incentivize the dissemination industries, the

preservation industries, and the derivative

work industries.”

Petitioners’ theory would unsettle, for tens of thousands

of copyright owners, rights established by the 1976 Act and

the extensions leading up to it. Countless transactions would

risk being undone, and countless investment-backed

expectations denied.

The Court’s recent warning that “courts must be cautious

before adopting changes that disrupt the settled expectations

of the inventing community” applies with equal force to the

community of copyright holders: where the law in an area is

“settled,” “fundamental alterations in these rules risk

® Ginsburg, supra, at 692-93.

destroying the legitimate expectations of . . . countless”

creators and investors “in their property.”

Indeed, Festo’s warning is even more compelling here.

Though the “doctrine of equivalents” at issue in Festo had

been occasionally reaffirmed, those reaffirmances were part

of a continuing “debate,”’' marked by vociferous dissents,

hesitant decisions acknowledging unfortunate uncertainty,

and repeated adjustments of the doctrine by Congress and the

courts.” Copyright term extensions for pre-existing works

date back even further, and the history of those extensions is

remarkably free of debate and dissent. As Petitioners note, no

court, and evidently no prior litigant, has ever challenged the

constitutionality of such extensions.’ Indeed, Petitioners’

observation that “the 1909 and 1976 statutes simply followed

the examples that preceded them””* is precisely on point:

Congress evidently treated the constitutionality of copyright

term extensions for pre-existing works as “settled” in 1909,

from 1961 to 1976, and again in 1998. Given Congress’s

settled view, its repeated legislation based on that view, and

the fact that no court has ever before doubted the

constitutionality of that practice, Festo’s instruction that

“{t]here is no justification for applying a new [rule] to those

who relied on a prior doctrine”’” applies powerfully here.

This Court has repeatedly anne the importance of not

lightly disruptin ng settled expectations. In Landgraf v. USI

Film Products,’® for example, this Court emphasized that

” Festo v. Shoketsu Kinzoku Kogyo Kabushiki Co.,__ U.S. __, 122 S.

Ct. 1831, 1841 (2002), citing Warner-Jenkinson v. Hilton Davis Chem.

Co., 520 U.S. 17, 20, 28 (1997) (reaffirming the doctrine of equivalents in

light of its “lengthy history”).

"Id. at 20.

” See generally Festo, supra.

7 Pet’r Br. at 30. See also Eldred v. Reno, 239 F.3d 372, 372 (D.C. Cir.

2001) (observing that no appellate court had ever before addressed the

constitutionality of extensions as applied to existing works).

- &

> Festo, 122 S. Ct. at 1841.

% §11 US. 244, 270 (1994).

reliance interests deserve particular deference when

contractual or property rights are at issue, “matters in which

predictability and stability are of prime importance.””’ “In a

free dynamic society, creativity in both commercial and

artistic endeavors is fostered by a rule of law that gives

people confidence about the legal consequences of their

actions.””®

C. There Has Been A Great Deal Of Actual Reliance

On The 1976 Copyright Extension And Other

Non-durational Extensions.

In 1976, Congress extended the duration of all existing

copyrights,” as the culmination of a series of interim

extensions started in 1962."° Like previous retroactive copy-

right extensions, the scope of those extensions was

substantial; they affected the copyright terms of almost every

Id. at 256. See also Nordlinger v. Hahn, 505 U.S. 1, 14 (1992);

Heckler v. Mathews, 465 U.S. 728, 746 (1984); New Orleans v. Dukes,

427 U.S. 297, 305 (1976); Penn Cent. Transp. Co. v. New York City, 438

U.S. 104, 124 (1978); Palazzolo v. Rhode Island, 533 U.S. 606, 617

(2001).

™ Landgraf, 511 U.S. at 266. See also, e.g., Toolson v. New York

Yankees, 346 U.S. 356, 357 (1953) (refusing to make ruling retroactive

because “the business has...been left for thirty years to develop, on the

understanding that it was not subject to existing...legislation”), see also

Radovich v. National Football League, 352 U.S. 445, 450-51 (1957)

(same).

” Copyright duration was 56 years under the 1909 Act, composed of a

28-year first term, renewable for a further 28 years. For most existing

works, the 1976 Act left the first term at 28 years but extended the second

term from 28 to 47 years, bringing the total term of protection to 75 years.

Copyrights already in their second term received the additional 19 years

automatically; copyrights in their first term received the full 47 year

second term upon renewal. 1976 Act, § 304 (a), (b). See ROBERT A.

GORMAN & JANE C. GINSBURG, COPYRIGHT FOR THE NINETIES 318 ef seq.

(4th ed. 1993). Unless otherwise noted, this discussion assumes that

term, and were thus entitled to the full 75 years of protection granted by

the 1909 and 1976 Acts.

* See Pet’r Br. at 2 n.1 (collecting extensions).

work copyrighted in the United States between 1910*' and

1976, provided that the copyright had been renewed. The

result was lengthened copynight protection for more than a

half-century of creative activity.

The Congressional Research Service (“CRS”) estimates

that, in the twenty-year period between 1922 and 1941,

copyrights were registered to no less than 77,000 works — or

3,850 works per year, on average — that continue to earn

royalties for their full seventy-five-year term.® Extrapolating

from this twenty-year period to the full sixty-six year period

at issue here, the number of works significantly affected by

the 1976 extension is in the range of 250,000." These

250,000 works, like any other piece of property or any other

investment, produce income and the rights in many of them

have been bought, sold, and traded, used as collateral, and

otherwise relied upon, by creators and industry, in the quarter

century since passage of the 1976 Act.

Dollar amounts are similarly reflective of the huge

reliance interests at stake. CRS estimates that approximately

49,000 books, musical works, and movies were copyrighted

between 1922 and 1941 that were still earning royalties at the

end of their copyright term; CRS further estimates that the

additional nineteen years of royalties that Congress granted to

these works in 1976 was worth approximately

*! Works created before 1910 were subject to the term set by the 1831

had all expired by 195 1—-well before the first interim extension in 1962.

‘2 Edward Rappaport, Copyright Term Extension: Estimating the

Economic Values, in CONGRESSIONAL RESEARCH SERVICE REPORT FOR

CONGRESS, at 8, 12, 15, 16 (May 11, 1998).

*° Again, this number takes into account that only a small number of

works are renewed, and an even smaller number have enduring value to

their creators in the form of royalties for decades following their

publication. (Without accounting for these things, the numbers would be

far larger: there were approximately 167,000 first-time copyright

registrations a year, on average, between 1923 and 1941; for the full 65-

year period, the equivalent number would he on the order of ten million.)

$31 7,000,000. Again exirapolating from the twenty-year

period to the sixty-six year period at issue here, the additional

royalties on books, music, and movies that Congress granted

in the 1976 Act is on the order of one billion dollars.

Works affected by the 1976 extension include some of the

20th century’s greatest creative and artistic achievements.

Even limiting the inquiry to copyrights that are set to expire

by 2010 under the 1976 Act — copyrights, that is, in which the

Act’s nineteen-year extension has already lapsed or will do so

shortly — Petitioners’ theory would unsettle the ownership

status of books like Faulkner’s The Sound and The Fury

(1929), Fitzgerald’s The Great Gatsby (1925) and

Hemingway’s A Farewell to Arms; musical works like

Copland’s Appalachian Spring (1944), Gershwin’s Rhapsody

in Blue (1924) and Porgy and Bess (1935), and Duke

Ellington’s Take the ‘A’ Train (1938); and movies and

musical theater works like Oklahoma (1943), The Wizard of

Oz (1939), Gone with the Wind (1939), and Casablanca

(1942).*° See Appendix, infra for examples of other works.

Transactions executed in at least partial reliance on the

1976 Act have been large and numerous. To give just a few

examples, Turner Broadcasting System acquired Metro-

Goldwyn-Mayer (“MGM”) for $1.5 billion in 1985 with the

primary purpose of acquiring MGM’s film library.*° In 1999,

** Rappaport, supra, at 16 (all amounts in 1997 dollars).

*° By virtue of the 1976 Copyright Act and the CTEA, each of these

works is still under copyright protection. Royalties on many of these

works is substantial: The Rodgers and Hammerstein Organization earns

$10 million annually in royalties and licensing fees; a nationwide license

for a Gershwin song, worth between $45,000 and $75,000 fifteen years

ago, now earns more than $250,000; Rhapsody in Blue became United

Airlines’ theme song for an estimated $500,000. David D. Kirkpatrick,

Media; Publishers and Libraries Square Off Over Free Online Access to

Books, N.Y. TIMES, June 17, 2002, at C7.

*° Geraldine Fabrikant, Turner To Sell MGM Assets, N.Y. TIMES, June

7, 1986, at A35. (“after [$300 million in] asset sales, Mr. Turner will have

paid about $1.2 billion for the property he sought in the MGM purchase,

the studio’s film library.”)

EMI Records acquired the Windswept Pacific music catalog,

which included more than 40,000 titles from early rock and

roll to modern pop songs, for 126 million pounds

(approximately $200 million).*’ And during the last decade,

Viacom acquired Simon & Schuster and Bertlesmann

acquired Random House.

Copyrights, of course, are bought and sold every day, and

these large transactions are just a small subset. Petitioners’

theory would throw countless transactions, large and small,

into doubt, potentially rendering vast numbers of copyrights

and copyright-driven transactions uncertain and insecure.

CONCLUSION

The judgment below should be affirmed.

Respectfully submitted,

CHARLES S. SIMS,

Counsel of Record

JON A. BAUMGARTEN

FRANK P. SCIBILIA

BRUCE BOYDEN

PROSKAUER ROSE LLP

1585 BROADWAY

NEW YORK, NY 10036

8? EMI Pays Pounds 11.5m for Stake in Phil Collins Music Publisher,

THE INDEPENDENT, November 4, 1999, at 23.

lap

APPENDIX

Selected Copywritten Works

1910-1954

Books

Edith Wharton Ethan Frome 1911

Robert Frost Poetry from A Boy’s 1913

Will

- through - 1951

The Road Not Taken

Agatha Christie The Mysterious Affair at | 1920

Styles

Willa Cather One of Ours 1921

T. S. Elliot The Waste Land 1922

P.G. Wodehouse The Inimitable Jeeves 1923

Sherwood Anderson | Horses and Men 1923

F. Scott Fitzgerald | The Great Gatsby 1925

Langston Hughes Poetry from The Weary | 1926

Blues

- through - 1951

Montage of a Dream

Deferred

Sinclair Lewis Arrowsmith 1926

Virginia Wolf To the Lighthouse 1927

William Faulkner The Sound and the Fury | 1929

As I Lay Dying 1930

Thomas Wolfe Look Homeward, Angel | 1929

e through e

A Western Journey 1951

Pearl S. Buck The Good Earth 1931

Aldous Huxley Brave New World 1932

James Hilton Lost Horizon 1933

Margaret Mitchell Gone with the Wind 1936

J.R.R. Tolkein The Hobbit 1937

2ap

Thornton Wilder Our Town 1938

John Steinbeck The Grapes of Wrath 1939

Eugene O’Neill The Iceman Cometh 1939

Long Day’s Journey Into | 1941

Night

Emest Hemingway | The Sun Also Rises 1926

A Farewell To Arms 1929

For Whom the Bell Tolls | 1940

Eudora Welty A Curtain of Green 1941

Tennessee Williams | The Glass Menagerie 1945

A Streetcar Named 1947

Desire

W.H. Auden The Age of Anxiety 1947

Norman Mailer The Naked and the Dead | 1948

George Orwell Nineteen Eighty-four 1949

Arthur Miller Death of a Salesman 1949

The Crucible 1953

Ray Bradbury Fahrenheit 451 1953

Herman Wouk The Caine Mutiny 1954

Music

W.C. Handy St. Louis Blues 1914

George Gershwin Rhapsody in Blue 1924

An American in Paris 1928

Porgy & Bess 1935

“Jelly Roll” Morton | Smokehouse Blues 1926

Jerome Kern Showboat 1927

Igor Stravinsky Symphony of Psalms 1929

Edward “Duke” It Don’t Mean a Thing if | 1932

Ellington it Ain’t Got that Swing

Mood Indigo 1933

Cole Porter Anything Goes 1934

Irving Berlin Cheek to Cheek 1935

eee ee —

ree

3ap

Harry Warren Lullaby of Broadway 1935

Chattanooga Choo Choo | 1941

You’ll Never Know 1943

That’s Amore 1953

Jerome Kern The Way You Look 1936

Tonight

Lorenz Hart My Funny Valentine 1937

Samuel Barber Adagio for Strings 1938

Aaron Copland Billy the Kid 1938

Appalachian Spring 1944

Duke Ellington Take the ‘A’ Train 1938

Ella Fitzgerald and | A-Tisket A-Tasket 1938

Al Feldman

Harold Arlen Over the Rainbow 1939

Blues in the Night 1942

White Christmas 1942

Leigh Harline When You Wish Upon | 1940

A Star

Rodgers & Oklahoma! 1943

Hammerstein Carousel 1945

South Pacific 1949

The King and I 1951

Woody Guthrie This Land is Your Land | 1944

Consuelo Velazquez | Besame Mucho 1944

Charlie Parker Groovin’ High 1945

Irving Berlin Annie Get Your Gun 1946

William “Count” Stay Cool 1946

Basie

“Dizzy” Gillespie A Night In Tunisia 1946

Jule Styne Let It Snow, Let It 1946

Snow, Let It Snow

William Best For Sentimental Reasons | 1946

Johnny Marks Rudolph the Red Nosed | 1949

Reindeer

Frank Loesser Guys & Dolls 1950

Jack Rollins Frosty the Snowman 1950

4ap

Art Tatum Stompin at the Savoy 1953

Bob Mermill How Much Is That 1953

Doggie In Window

Pat Ballard Mister Sandman 1954

Bill Haley Rock Around the Clock | 1954

Movies

Ben-Hur 1926

The Jazz Singer 1927

Duck Soup 1933

King Kong 1933

It Happened One Night 1934

Snow White and the Seven Dwarfs 1937

Gone With the Wind 1939

The Wizard of Oz 1939

Fantasia 1940

Citizen Kane 1941

The Maltese Falcon 194]

Casablanca 1942

Double Indemnity 1944

It’s a Wonderful Life 1946

Singin’ in the Rain 1952

On the Waterfront 1954

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AMICI CURIAE

Association of American Publishers is the national

association in the United States of publishers of general

books, textbooks and educational materials. The AAP’s

approximately 300 members include most of the major book

publishers in the United States and many smaller or non-

profit publishers, including university presses and scholarly

associations.

Amberson Holdings LLC owns or controls the copyrights to

the works of Leonard Bernstein.

Richard Avedon is a photographer whose images are

circulated around the world.

The George Balanchine Trust owns or controls the

copyrights to most of the choreographic works of America’s

leading choreographer.

Peter Barték owns or controls the copyrights to many of

Béla Bartok’s compositions.

Boosey & Hawkes, Inc. is the publisher of many of

America’s most important composers of concert and operatic

works, from the 20th-century masters such as Aaron Copland

and Alberto Ginastera, to leading figures of the present day,

including John Adams, Elliott Carter, and Steve Reich.

The Aaron Copland Fund For Music, Inc. was founded

under the will of Aaron Copland to encourage and improve

public knowledge of contemporary American concert music

and jazz. Since 1992, the Copland Fund has awarded more

' than $9 million to support the recording, performance and

other dissemination of American Music, both in the United

States and around the world.

European-American Music Corporation and its affiliate

Helicon Music Corporation, publish a substantial catalogue of

concert works by living American composers, including

Robert Beaser, Kamran Ince, Stephen Paulus, Tobias Picker,

Bernard Rands, Christopher Rouse, Joseph Schwantner and

Alvin Singleton, among others.

The George Gershwin Family Trust is a private entity

which administers certain rights in the works of George

Gershwin. The Trustees, both on behalf of the Trust and as

individuals, are active in the support of the arts and of

creative works, old and new.

The Leonore S. Gershwin Trust for the benefit of the Ira

and The Leonore Gershwin Philanthropic Fund and The

Leonore S. Gershwin Trust for the benefit of The Library

of Congress, both funded by revenues derived solely from

copyrights in the works of Ira Gershwin, support a significant

number of charitable institutions, including arts organizations

which, in turn, support the work of new artists, as well as the

documentation and preservation activities of the United States

Library of Congress.

The Keith Haring Foundation helps fund a children’s

medical center, offers an art education scholarship, and

supports local and national AIDS charities. These efforts

have all been funded by income derived from the exploitation

of Keith Haring’s copyrighted images.

The Frederick Loewe Foundation, Inc. supports New

Dramatists and other organizations for the development of

young writers, particularly in the music theatre.

David Mamet is a Pulitzer Prize-winning Playwright.

Glen Roven is a composer.

The Kurt Weill Foundation for Music, funded solely by

Center in New York City, publishes a complete edition of

Weill’s works and other educational materials, and sponsors

grants and prizes to performers, composers, and scholars.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.