Amicus Curiae Brief — Eldred v. Ashcroft

Supreme Court brief2003

Ask Donna

What actually matters in this document.

Text

Supreme Court,US. |

FILED |

TH AUG 5 2002 |

No. 01-618 | CLERK

——

IN THE

Supreme Court of the Gnited States

ERIC ELDRED, et al.,

Petitioners,

JOHN D. ASHCROFT,

In his official capacity as Attorney General,

Respondent.

BRIEF FOR AMICI CURIAE REPRESENTATIVES

F. JAMES SENSENBRENNER, JR.,

JOHN CONYERS, JR., HOWARD COBLE, AND

HOWARD L. BERMAN IN SUPPORT OF RESPONDENT

RONALD A. KLAIN

(Counsel of Record)

ARTHUR B. CULVAHOUSE, JR.

JESSICA DAVIDSON MILLER

MATTHEW M. SHORS

O’MELVENY & MYERS LLP

555 13th Street, N.W.

Washington, D.C. 20004

(202) 383-5300

ROBERT M. SCHWARTZ

VICTOR JIH

O’MELVENY & MYERS LLP

1999 Avenue of the Stars

Los Angeles, CA 90067

(310) 553-6700

Attorneys for Amici Curiae

FR EE EE ES RTS SST A TE TD

TABLE OF CONTENTS

Page

I I Ti terest rianrecntatannpennittnnensienaniomennnese l

SUMMARY OF ARGUMENT ....0.........cccccssssceseseeseseeseeeees l

SEITE sotushsiinecinsthitniiiniibatticntemianetacininnectmacnennenmnmniented 4

I. THE CONSTITUTION VESTS IN

CONGRESS BROAD AUTHORITY TO

“PROMOTE THE PROGRESS OF

I lated aamaemccncsnnremmpnnmnsneel 6

I. THE EXTENSION OF EXISTING

COPYRIGHTS UNDER THE CTEA

PROMOTES “PROGRESS” AND

CLEARLY FALLS WITHIN CONGRESS’S

POWER UNDER THE COPYRIGHT

Ils siadihciididtsicsleeisthiiadiipiinsinilieiibidapiapremniemenemmemenne 10

A. Congress Appropriately Concluded

That The CTEA’s Extension Of

Existing Copyrights Promotes The

Progress OF SCIGRCE. ...0cccccscccccsccscscescscesecese 10

l. Creating Derivative Works. ............ 11

2. Creating Future Works. ................... 12

3. Preserving Existing Works.............. 12

4. Disseminating Existing Works........ 16

5. EE 17

TABLE OF CONTENTS ,

(continued)

Page

B. Petitioners’ Per Se Rule Is

Unsupported By The “Limited Times”

And Originality Requirements. ................... 18

C. Petitioners’ Per Se Rule Would

Undermine Two Centuries Of

Unbroken Constitutional Tradition

Concerning Congress’s Copyright

POWER. cocccsccesnssnensttineie 20

Ii. CONGRESS’S EXERCISE OF ITS

TERM OF EXISTING WORKS DOES NOT

INVOKE HEIGHTENED SCRUTINY

UNDER THE FIRST AMENDMENT. ................- 24

CEL BOIS ...deccccccssocscsscosenceccncsssseseaninenaaeeeeee 29

ill

TABLE OF AUTHORITIES

Page(s)

CASES

Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

I 9,27

Brenner v. Manson,

EE 11

Buckley v. Valeo,

ee 27

Burrows-Giles Lithographic Co. v. Sarony,

a 22

l v. Acuff-Rose Music, Inc.,

TTT a 6, 12, 29

CCC Info. Servs., Inc. v. Maclean Hunter

Mkt. Reports,

ae 13

Deepsouth Packing Co. v. Laitram Corp.,

a 8, 27

Diamond v. Chakrabarty,

Te 7, 27

Eldred v. Reno,

See PU se Galle BE D ccccnccccccsscsssescesssssessseess 8, 17

Feist Publications, Inc. v. Rural Telephone

erste ene cnetecnemsesescnceal 9, 20, 25

Fox Film v. Doyal,

ee 7, 27

Graham v. John Deere Co.,

SEEN Of CINE cccncsescencsscscscescssecccscceccccessensesscsese 7,9, 11

TABLE OF AUTHORITIES

(continued)

Page(s)

Harmelin v. Michigan,

eee 21

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

of 8 ne passim

McCulloch v. Maryland,

yh) 3 8 9

Mitchell Bros. Film Group v. Cinema Adult

Theater,

oe 9

N.Y. Times Co. v. United States,

Ge FE ee crcccccnettesnemnnmnasinn 24

Parker v. Flook,

ar es Ge cnmmmmnmnennnine 7,27

Pennock v. Dialogue,

gp Bh 0 7, 11,27

Corp. of Am. v. Universal City Studios, Inc.,

or 7, 10, 27

Stewart v. Abend,

ee 8, 12, 27

Te er Corp. v. Columbia Broad. Sys., Inc.,

a > BP rercctrarsenersemimenmennensemnne 27

Trade-Mark Cases,

Re 9,11

Turner Broadcasting Systems v. FCC,

8 eee 24, 28, 29

Twentieth Century Music Corp. v. Aiken,

2 Gf eee 8

TABLE OF AUTHORITIES

(continued)

Page(s)

Wheaton v. Peters,

eC iikinnieternsnciscsnsecssesscmemmaniones 4

STATUTES AND CONSTITUTIONAL PROVISIONS

Fr Ts Ut tt ciininniesnenicsiicnpasininantanieameninenmsmmieness 5, 25, 26

Be ie tt UIT cennsintsnenmernisionmensconcensesl i aiancteeateneeniiteneni 25

| EELS IETERITSESS: eee ee Renna ee 5

Act of August 28, 1965,

Pub. L. No. 89-142, 79 Stat. 581 (1965) ...............c.0000+- 21

Act of December 16, 1969,

Pub. L. No. 91-147, 83 Stat. 360 (1969) ......................2. 20

Act of December 17, 1970,

Pub. L. No. 91-555, 84 Stat. 1441 (1970)..................... 20

Act of December 31, 1974,

Pub. L. No. 93-573, 88 Stat. 1873 (1974)...............000+ 20

Act of Feb. 3, 1831,

| ETE 21, 23

Act of July 23, 1968,

Pub. L. No. 90-416, 82 Stat. 397 (1968)..................000 20

Act of July 4, 1836,

I TUTTI soxts its ircennsinrnstenemnenneninmeneneoeneneel 23

Act of March 4, 1909,

ey Ces SY Ct rcrncenscnnccnsensnemmmmneonemnts 21

Act of May 31, 1790,

icine tcrntrneresereraimnenspanenaninienmiiennnt 21

Act of November 16, 1967,

Pub. L. No. 90-141, 81 Stat. 464 (1967)....................0. 21

Act of November 24, 1971,

Pub. L. No. 92-170, 85 Stat. 490 (1971) ......cccccccsssssssee 20

TABLE OF AUTHORITIES

(continued)

Page(s)

Act of October 25, 1972,

Pub. L. No. 92-566, 86 Stat. 1181 (1972)...............c000 20

Act of September 19, 1962,

Pub. L. No. 87-668, 76 Stat. 555 (1962) ............cc.se00008 21

An Act to Continue the Copy-Right to John

Rowlett,

TE 23

An Act for the Relief of Oliver Evans,

Ry Gee scccncnctnrsucrenceninnmnemetennpemenamsemennests 23

Pub. L. No. 94-553, 90 Stat. 2541 (1976)...............c000 20

Fairness in Music Licensing Act of 1998,

Pub. L. No. 105-298, Title I, 112 Stat.

BT ei cencinnnattiintesmenstertinmaptiptenmmmemanenennentel 6

Sonny Bono Copyright Term Extension Act,

Pub. L. No. 105-298, Title I, 112 Stat.

ES Ce rscenscnseemememmimnmmenenmnnenens passim

RS passim

ee passim

LEGISLATIVE MATERIALS

144 Cong. Rec. H1459 (Mar. 25, 1988).................0000 passim

The Copyright Term Extension Act of 1995:

Hearings on S. 483 Before the Senate

Judiciary Comm., 104th Cong. (1995)...............000e0 5, 13

the Subcomm. on Courts and

Intellectual Property of the House Comm.

on the Judiciary, | ek passim

Vii

TABLE OF AUTHORITIES

(continued)

H.R. Rep. No. 105-452 (1998)..........ccsessssseseessseseeseesensneeees 16

Pre-1978 Distribution of Recordings

Containing Musical Compositions;

per Program Licenses: Hearings Before

the Subcomm. On Courts and Intellectual

—- of the House Comm. on the

iciary, 105th Cong. (1997) ............sccsscseseeseeceseeeees 13

S. Rep. No. 104-315 (1996) .......cccccssssssuesssssssssssssveesees passim

OTHER AUTHORITIES

James Madison, Notes on Debates in the

Federal Convention Of 1787..............0csssseseeseeseeseseeneeees 19

The Compact Oxford English Dictionary

STEP UIEE TU cicinsinstuinnntntenitenntenanemnntamemnmesemmatmmmmenneees 19

Tyler T. Ochoa, Patent and Copyright Term

Extensions and the Constitution: A

Historical Perspective,

49 J. Copyright Soc’y USA 19 (2001) ............cccceseeeees 23

Edward C. Walterscheid, Defining the Patent

and Copyright Term: Term Limits and the

Intellectual Property Clause,

Fe tity SE cccnncenenemnnenmnnes 19

Webster's Third New Int'l Dictionary (1993)................-++ 20

5 Writings of Thomas Jefferson (Ford ed., 1985) ............... 20

INTEREST OF AMICI’

Amici curiae are the bipartisan leaders of the House

Committee on the Judiciary and its intellectual property sub-

committee: Reps. F. James Sensenbrenner, Jr., and John

Conyers, Jr., the Chairman and Ranking Member of the

House Committee on the Judiciary; and Howard Coble and

Howard Berman, the Chairman and Ranking Member of the

House Committee on the Judiciary’s Subcommittee on

Courts, the Internet, and Intellectual Property. Amici played

a major role in securing Congressional passage of the Sonny

Bono Copyright Term Extension Act [“the CTEA”], Pub. L.

No. 105-298, Title I, 112 Stat. 2827 (1998).

Amici have dual interests in upholding the constitution-

ality of the CTEA. First, amici have an institutional interest

in upholding Congressional authority to enact copyright leg-

islation that is consistent with the text and purpose of the

in ensuring that copyright law is responsive to demographic,

commercial, and technological changes, both domestically

and internationally. Petitioners here would undermine those

interests by breaking with centuries of Constitutional tradi-

tion and subjecting copyright laws to cramped, formalistic,

and ultimately unsustainable interpretations of both Article I,

§ 8 [“the Copyright Clause”’] and the First Amendment.

SUMMARY OF ARGUMENT

This case concerns fundamental copyright policy deci-

sions that, as this Court has consistently recognized, the

Framers vested in Congress and not in the courts. In 1998,

' [Letters of consent from both parties have been filed with the

Clerk of the Court. In accordance with Rule 37.76, amici state that no

counsel for either party has authored this brief in whole or in part, and no

person or entity, other than the amici or their counsel, has made a mone-

tary contribution to the preparation or submission of this brief.

petitioners and their supportive amici sought to persuade

Congress not to extend the term of copyright. Although

Congress carefully considered their viewpoints, it rejected

them and enacted the CTEA, extending the term of copyright

for new and existing works by twenty years. Having failed

to persuade Congress of their point of view, petitioners are

now seeking to transform their policy disagreement into a

legal dispute of purportedly constitutional dimension. Their

request should be rejected.

In a significant concession, petitioners do not challenge

Congress’s power to extend copyright terms prospectively—

i.e., for works of authorship created after an extension’s ef-

fective date. “Whether 50 years is enough, or 70 years too

much, is not a judgment meet for this Court.” Pet. Br. at 14.

Rather, they challenge only the power of Congress to extend

the term of copyright retrospectively—i.e., for works in exis-

tence when an extension is enacted. According to petition-

ers, any extension of an existing term necessarily violates the

“Progress,” “limited Times,” and originality requirements of

the Copyright Clause, and cannot pass the purportedly appli-

cable First Amendment scrutiny. To petitioners, the actual

length of the extension—be it twenty days or twenty years—

is irrelevant, for “[t]he line between prospective and retroac-

tive extensions is a clear one.” Pet. Br. at 14.

The problem with the “line” petitioners wish to draw is

that, while it is “clear,” it finds no support in the Constitu-

tion. Indeed, petitioners’ “clear line” would eviscerate two

centuries of constitutional tradition by invalidating an act of

the First Congress in 1790, as well as a dozen successive

the Constitution’s grant of authority to Congress.

1. The CTEA’s extension of the terms of existing works

promotes “Progress” and otherwise satisfies the require-

ments of the Copyright Clause. In periodically expanding

the scope of copyright to respond to changes in commerce,

demographics, and technology, Congress has most often pro-

> shite EY

fe ey ee

RAE

SOT TET ea

iis he a >

a Pace

tected both future and existing copyrights. This Court has

consistently recognized Congress’s institutional authority to

promote such progress, and has never suggested (nor has any

court ever held) that protecting existing copyrights exceeds

that authority.

Petitioners assert that the authority of Congress to pro-

mote progress exists for one purpose only: to induce the

creation of new works. But the Framers’ view was not so

constricted. Of course, amici acknowledge that the grant of

power under the Copyright Clause is not absolute, and that

the Clause—and this Court’s cases—place limits on the ex-

ercise of Congress’s copyright power. Amici disagree with

petitioners, however, over the contours of those limits, and

the scrutiny with which this Court should analyze those Con-

gressional enactments.

Each of petitioners’ arguments against the extension of

the term of copyright to existing works was carefully consid-

ered during a legislative process that stretched over several

years; however, these arguments were ultimately rejected by

the body that the Framers determined should make such de-

cisions: Congress. Thus, the CTEA reflects the considered

judgment of Congress that extending existing copyright

terms in the face of meaningful changes in commerce,

demographics, and technology would promote progress by:

(1) encouraging authors to create derivative works; (2) pro-

viding incentives to create new works; (3) preserving exist-

ing works; (4) disseminating existing works; and (5) harmo-

nizing United States copyright protection with that of our

major trading partners. It therefore satisfies the dictates of

the Copyright Clause.

2. The CTEA creates no conflict with the First Amend-

ment. Amici recognize that the Constitution’s speech-

protecting principles place limits on the reach of Congress’s

long as copyright protects only expression, not ideas, and

makes even expression subject to “fair use” by other speak-

ers, it strikes a “definitional balance” with the First Amend-

ment. The CTEA reflects Congress’s careful efforts to main-

tain this balance. On that, petitioners cannot disagree. In-

stead, they urge the overlay of intermediate scrutiny on top

of this definitional balance. However, their argument ig-

nores the unique ways in which speech interests are affected

by the intersection of the Copyright Clause, copyright legis-

lation, and the First Amendment. Their argument also ig-

nores the established speech-protecting limits to which copy-

right is already subject. In the final analysis, the CTEA is a

permissible exercise of Congress’s power, reflecting a policy

choice by Congress setting the duration of copyright, and

respecting the idea/expression dichotomy and the fair use

doctrine. The overlay of intermediate scrutiny here is thus

both unwarranted and unworkable.

In short, the CTEA is a core exercise of Congress’s

power under Article I of the Constitution. It promotes pro-

gress, creates an engine of free expression, and strikes a

definitional balance with the First Amendment. Accord-

ingly, it should be upheld.

ARGUMENT

Petitioners imply that the CTEA is a piece of narrow,

special interest legislation, passed under cover of darkness,

without careful consideration. That is simply not so. The

CTEA was the product of years of legislative consideration,

numerous hearings, and a 1993 study by the Copyright Of-

fice on the duration of copyright (which itself followed an

extended public comment period). See Copyright Term,

Film Labeling, and Film Preservation Legislation: Hearings

on H.R. 989, H.R. 1248, and H.R. 1734 Before the Subcomm.

on Courts and Intellectual Property of the House Comm. on

the Judiciary, 104th Cong. 182-83 (1995) [“1995 House

Hearings”) (Statement of Marybeth Peters, Register of Copy-

rights (“Peters statement”)). In enacting it, Congress was

mindful of the scope of its constitutional responsibility. See

144 Cong. Rec. H1459 (Mar. 25, 1988) (remarks of Rep.

Sensenbrenner). Congress took into account the public’s in-

terest in the public domain, and specifically considered the

issues raised by petitioners here. Congress also considered

the various issues raised by the amici supporting petitioners.”

Congress not only listened to these concerns; it wrote the

CTEA to address many of them.’

? Congress heard the concems of the libraries, archivists, and digital

database creators who criticized a twenty-year postponement of works

entering the public domain. See, e.g., 1995 House Hearings at 182-204,

676-679. Congress also heard the concerns of scholars, museums, teach-

ers and artists who noted the practical difficulties of finding successors-

in-interest to old copyrighted materials of academic importance. See,

e.g., The Copyright Term Extension Act of 1995: Hearings on S. 483 Be-

fore the Senate Judiciary Comm., 104th Cong. 18 (1995) [“1995 Senate

Hearings”]. Congress heard concerns about preserving older works, in-

cluding motion pictures. See, e.g., 1995 House Hearings at 64-73, 281-

89, 423-502. Congress heard from intellectual property law professors,

who address to this Court their disagreements with the policy balance

Congress struck. See, e.g., id. at 290-311 (statement of Professor Karjala

on behalf of the U.S. Copyright and Intellectual Property Law Profes-

sors). And Congress listened to extensive testimony from Professor Pe-

ter Jazsi, the author of the Brief of Amici Curiae National Writers Union,

Charles Baxter, Wendell Berry, et al. See, e.g., 1995 Senate Hearings at

71-90, 123-27.

> For example, the CTEA extended the termination rights found in

17 U.S.C. § 102(d) to readjust the balance between authors/heirs and

current copyright owners. CTEA, Title I, § 103, 112 Stat. at 2829. The

CTEA also amended 17 U.S.C. § 108 to give libraries, archives, and

nonprofit educational institutions a defined right to reproduce, distribute,

display, or perform (even digitally) works that are in their last twenty

years of copyright for purposes of preservation, scholarship, or research,

particularly in situations where the work is not being commercially ex-

ploited or copies cannot be obtained at a reasonable price. See id., § 104,

112 Stat. 2829. That amendment created a “carefully crafted, balanced

library exemption that ensures that the legitimate needs of the libraries

are met.” 144 Cong. Rec. at H1465 (Representative Conyers). And

Congress, led by the efforts of Representatives Sensenbrenner and

McCollum, enacted provisions to protect the use of copyrighted works by

(footnote continues on next page)

In so doing, Congress fully considered the costs of term

extension. See, e.g., 1995 House Hearings at 86. But Con-

gress—quite rightly—also considered the costs of failing to

enact term extensions. Cf Campbell v. Acuff-Rose Music,

Inc., 510 U.S. 569, 599 (1994) (Kennedy, J., concurring) (the

“underprotection of copyright [can] disserve[] the goals of

these issues, Congress enacted the CTEA and extended the

term of copyright for new and existing works.

Petitioners and their amici disagree with the balance

Congress struck. That is their prerogative. But those dis-

agreements are over matters of policy that the Founders en-

trusted to Congress—not matters of constitutional law. See

Brief of George A. Akerlof, Kenneth J. Arrow, Timothy F.

Bresnahan, James M. Buchanan, ef a/. As explained in the

sections that follow, petitioners’ arguments to the contrary

are incompatible with the text, structure, and history of the

under that Clause. As such, their challenge to the CTEA

should be rejected, and the judgment of the Court of Appeals

should be affirmed.

I. THE CONSTITUTION VESTS IN CONGRESS

BROAD AUTHORITY TO “PROMOTE THE

PROGRESS OF SCIENCE.”

The Copyright Clause authorizes Congress to “promote

the Progress of Science and useful Arts, by securing for lim-

ited Times to Authors and Inventors the exclusive Right to

their respective Writings and Discoveries.” U.S. Const. Art.

I, § 8, par. 8. This power over patents and copyrights is

vested in Congress—not the courts, the Executive, or the

small businesses. Fairness in Music Licensing Act of 1998, Pub. L. No.

105-298, Title II, 112 Stat. 2827 (1998).

states. See Fox Film Corp. v. Doyal, 286 U.S. 123, 127

(1932).

The authorization of power in the Copyright Clause is

based on Congress’s “institutional ability” to draw the “diffi-

cult balance between the interests of authors and inventors”

and “society’s competing interest in the free flow of ideas,

information, and commerce.” Sony Corp. of Am. v. Univer-

sal City Studios, Inc., 464 U.S. 417, 429, 431 (1984). Deci-

sions over the scope and duration of intellectual property are

generally resolved “within the legislative process after the

kind of investigation, examination, and study that legislative

bodies can provide and courts cannot.” Diamond v. Chakra-

barty, 447 U.S. 303, 317 (1980) (patents). Such decisions

require “the balancing of competing values and interests,

which in our democratic system is the business of elected

representatives.” Jd. Accordingly, the question of how long

a copyright (or patert) term should endure is committed “to

the discretion of Congress.” Pennock v. Dialogue, 27 U.S.

(2 Pet.) 1, 17 (1829) (patents); Parker v. Flook, 437 U.S.

584, 595 (1978) (Congress should answer the “[dlifficult

questions of policy concerning ... the form and duration of

[patent] protection”’).

Petitioners are incorrect to suggest that Congress may

constitutionally exercise its authority to promote progress for

one purpose only—to induce the creation of new works. Pet.

Br. at 15-16. While encouraging the creation of new works

is certainly a paradigm purpose of copyright, it is not the

only constitutionally permissible purpose for Congress to

consider. This Court has repeatedly confirmed that, in pro-

moting “Progress” under the Copyright Clause, Congress can

consider the whole gamut of “innovation, advancement or

social benefit” the public may obtain from copyright. Gra-

ham v. John Deere Co., 383 U.S. 1, 6 (1966); see also Fox

Film Corp., 286 U.S. at 127 (the monopoly is justified by the

“general benefits derived by the public from the labours of

authors”). Copyright, as an “engine of free expression,”

“supplies the economic incentive to ... disseminate ideas.”

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

539, 558 (1985) (emphasis added). Thus, Congress is consti-

tutionally permitted to consider all of the ways copyright

may “serve the cause of promoting broad public availability

of literature, music, and the other arts.” Twentieth Century

Music Corp. v. Aiken, 422 U.S. 151, 156 (1975).

Because the Constitution vests in Congress broad power

to promote progress under the Copyright Clause, this Court’s

review of the exercises of that power has been consistently

deferential. On a number of occasions, the Court has spe-

cifically rejected attempts—like this one—to substitute re-

strictive views of “Progress” for those reflecting Congress’s

reasoned judgments. See Deepsouth Packing Co. v. Laitram

Corp., 406 U.S. 518, 529-30 (1972) (“direction of Art. I is

that Congress shall have the power to promote the progress

of science and the useful arts”) (emphasis in original); Stew-

art v. Abend, 495 U.S. 207, 228 (1990) (balancing costs and

benefits of copyright law is “better addressed by Congress

than the courts”); id. at 230 (“it is not our role to alter the

delicate balance Congress has labored to achieve”).

The Court of Appeals acted consistently with this prece-

dent by asking—and answering in the affirmative—whether

the CTEA “‘is a ‘necessary and proper’ exercise of the power

conferred upon the Congress by the Copyright Clause.” E£/-

dred v. Reno, 239 F.3d 372, 378 (D.C. Cir. 2001). In so do-

ing, the court tracked closely the directive of McCulloch v.

Maryland, finding that “the CTEA [is] an ‘appropriate’

means, and ‘plainly adapted’ to the end prescribed in the

* The Brief of Intellectual Property Law Professors as Amici Curiae

Supporting Petitioners (“IP Br.”) confirms this view, arguing that the

“Framers intended the Copyright and Patent Clause to give Congress the

power” not only “to encourage the creation” of writings, but also “to en-

courage ... the broad dissemination, and widespread use of writings.” IP

Br. at 8.

preamble [of Article I, § 8].” Jd.; of McCulloch v. Mary-

land, 17 U.S. (4 Wheat.) 316, 421 (1819) (“Let the end be

legitimate, let it be within the scope of the constitution, and

all means which are appropriate, which are plainly adapted

to that end . . . . are constitutional.”).°

This standard of review correctly balances Congress’s

broad powers to promote progress under the Copyright

Clause with the outer limits to which those powers are sub-

ject. With respect to those outer limits, we agree with peti-

tioners that the Copyright Clause does not support the crea-

tion of trademark law, see Trade-Mark Cases, 100 U.S. 82

(1879), recognize a common law right, see Wheaton v. Pe-

ters, 33 U.S. (8 Pet.) 591 (1834), or authorize the grant of

exclusive rights for the creation of unoriginal works, see

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

U.S. 340, 346 (1991). These limits define the subject matter

Congress may regulate under the Copyright Clause, and thus

create logical stopping points for the exercise of Congress’s

power. But, within these recognized limits, this Court has

always allowed “Congress [to] implement the stated purpose

of the Framers by selecting the policy which in its judgment

best effectuates the constitutional aim.” Graham, 383 U.S.

at 6; see also Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

489 U.S. 141, 168 (1989) (“It is for Congress to determine if

the present system . . . is ineffectual in promoting the useful

arts... ”). Thus, this Court at once properly places clear

outer limits on the protectible subject matter of copyright,

while deferring to Congress’s decisions regarding how best

to promote progress through regulating that protectible sub-

ject matter.

* Other courts have similarly recognized that their “role in judging

whether Congress has exceeded its Article I [copyright power] is limited

... by the lenient standard of McCulloch.” Mitchell Bros. Film Group v.

Cinema Adult Theater, 604 F.2d 852, 860 (5th Cir. 1979).

Il. THE EXTENSION OF EXISTING COPYRIGHTS

UNDER THE CTEA PROMOTES “PROGRESS”

AND CLEARLY FALLS WITHIN CONGRESS’S

POWER UNDER THE COPYRIGHT CLAUSE.

A. Congress Appropriately Concluded That The

CTEA’s Extension Of Existing Copyrights Pro-

motes The Progress Of Science.

Petitioners argue that the extension of an existing copy-

right cannot possibly “promote the Progress of Science” be-

cause “the incentive is being given for work that has already

been produced.” Pet. Br. at 22. In their view, “[rjetroactive

extensions cannot ‘promote’ the past.” Jd. However, Con-

gress’s conclusion to the contrary is more consistent with

history—and with common sense. There is no historical

evidence that the Framers intended to require Congress to

promote progress in any pre-ordained fashion. See Edward

C. Walterscheid, Defining the Patent and Copyright Term:

Term Limits and the Intellectual Property Clause, 7 J. Intell.

Prop. L. 315, 320 (2000) (the “Framers desired to give Con-

gress authority to engage in the patent and copyright practice

that had long been followed in England, but with discretion

to modify it to meet American circumstances”). To the con-

trary, the Constitution recognizes that “[s]uccessive ages

have drawn different balances among the interest of the

writer in the control and exploitation of his intellectual prop-

erty, the related interest of the publisher, and the competing

interest of society in the untrammeled dissemination of

ideas.” Sony, 464 U.S. at 431 n.12 (quoting Foreword to B.

The Constitution vests in Congress the “constitutional au-

thority and the institutional ability to accommodate fully the

varied permutations of competing interests that are inevitably

implicated” by new circumstances or new technologies, id. at

431, and Congress may promote the progress of science “by

selecting the policy which in its judgment best effectuates the

eg et IE IO OO LON .

— —

= ~ a aim.” Graham, 383 U.S. at 6 (emphasis

Here, as set forth in the CTEA’s legislative history,

Congress used its “judgment” in recognizing at least five

ways in which the extension of existing copyright under the

CTEA promotes the “Progress of Science.” In the end, peti-

tioners’ disagreement with that judgment is a disagreement

over the policy decision Congress made, and does not render

the law unconstitutional.

1. Creating Derivative Works.

_ Congress determined that the CTEA’s extension of ex-

isting copyright provides incentives for existing copyright

holders to create important “derivative” works that would

otherwise never be created. Congress recognized that “com-

panies are more likely to invest resources in creating sequels

or remakes of existing works if they know that the expiration

of the copyright in the original work is more than twenty

years in the future.” 1995 House Hearings at 583 (Letter

from Professor Paul Goldstein, Stanford Law School) (em-

phasis added).’ Such incentives to create derivative works

promote progress by furthering the dissemination of ideas

and knowledge. S. Rep. No. 104-315, at 11-12 (1996); see

* Petitioners argue that Congress must exact a new quid pro quo

every time it decides to alter the scope or duration of existing intellectual

property rights. Pet. Br. at 16. The cases petitioners cite, however, refer

to the general benefits that a copyright regime is meant to serve. See,

e.g., Graham, 383 U.S. at 6; Brenner v. Manson, 383 U.S. 519, 534

(1966); Trade-Mark Cases, 100 U.S. at 94; Pennock, 27 U.S. at 23. They

do not define “Progress” in the narrow way petitioners suggest.

See also 1995 House Hearings at 669 (incorporating article by

Lisa M. Brownlee, The EC Term Directive, the Uruguay Round Agree-

ments Act, and the Proposed U.S. Copyright Term Extension Act of 1995

(1995)) (“An author’s incentive to create derivative works based upon

a ane

also generally Stewart, 495 U.S. at 228 (discussing the value

to authors of derivative works); compare Campbell, 510 U.S.

at 590 (1994) (in evaluating a person’s right to make fair use

of a copyrighted work, the Court must consider the “harm to

the market for derivative works”).

Petitioners do not deny the importance of derivative

works. In fact, they extol the value of derivative works. Pet.

Br. at 5-6 (describing petitioners’ desires to “build upon and

use content” from copyrighted work to create “derivative

works”). But they seek to create those works without per-

mission from, or payment to, the author. They believe that

early expiration of existing copyrights will lead to the crea-

tion of more, or more important, derivative works than those

created by existing copyright holders protected by term ex-

tension. Congress concluded the opposite—that “[flew are

willing to make . . . significant expenditures for the creation

of derivative works if they will have to compete with other

derivative works based on the same underlying work. There-

fore, the public is more likely to see high caliber derivative

works if they are based on copyrighted works and made un-

der authorization from the copyright proprietor.” 1995

House Hearings at 633-34 (joint statement of the Coalition of

Creators and Copyright Owners). That policy decision was

amply supported by the record—and is emphatically one for

the Congress, not the courts, to resolve.

2. Creating Future Works.

Congress also believed that the CTEA’s extension of ex-

isting copyrights would lead to the creation of new works by

enabling authors to create those works. Petitioners focus

exclusively on the fact that term extension cannot incentivize

the creation of a “work that has already been produced” be-

cause “[rjetroactive extensions cannot ‘promote’ the past.”

Pet. Br. at 22. Petitioners’ argument, again, is grounded in a

policy disagreement—not constitutional law. It is also de-

cidedly incorrect.

Congress correctly understood that the decision to create

a new work does not depend solely on the direct incentives

provided for future works, but also on the existence of pre-

sent resources to fund future creation. Fewer than ten per-

cent of the members of the American Society of Composers,

Authors, and Publishers earn their living full-time from their

music, and many of those who do make under $10,000 a

year. See 144 Cong. Rec. H1461-62 (Mar. 25, 1988). A

has “a chilling effect on the decision of our creators to con-

tinue to practice their craft.” Pre-1978 Distribution of Re-

cordings Containing Musical Compositions; Copyright Term

Extension; and Copyright per Program Licenses: Hearings

Before the Subcomm. On Courts and Intellectual Property of

the House Comm. on the Judiciary, 105th Cong. 134 (1997)

[1997 House Hearings].* By contrast, a regime that extends

the term of existing copyrights “provide[s] additional income

that would finance the production and publication of new

works” by those with existing copyrights. 1995 House Hear-

ings at 158 (“Peters statement”).

The additional income provided by term extension also

benefits larger institutional creators and publishers of copy-

righted works. See 1995 House Hearings at 583 (letter from

Professor Paul Goldstein, Stanford Law School) (“The great

majority of motion pictures fail to repay their budgets and

motion picture companies must rely on profits from block-

* See also 1995 Senate Hearings at 44 (statement of Alan Menken)

(“There comes a point in most people’s lives when one must make a

practical decision about the choice of a career. The continuing ability to

provide for one’s family both during and after one’s lifetime would cer-

tainly be a factor. If it becomes clear that insufficient copyright protec-

tion is available to provide that support, there will be less incentive to try

to make one’s living as a creator.”) See generally CCC Info. Servs., Inc.

v. Maclean Hunter Mkt. Reports, 44 F.3d 61, 69 (2d Cir. 1994)

(copyright enables authors to “earn a living from the creations that

benefited the public”).

busters and even medium successes to balance these losses.

By increasing the value of their libraries overall, term exten-

sion can give them revenue to produce new films during the

extension period.”). Additional income enables institutional

creators and publishers “to finance the production of mar-

ginal works and those involving greater risks,” such as those

by “young or emerging authors” or more “serious [works]”

that are “less popular.” S. Rep. No. 104-315, at 12-13; 1995

House Hearings at 196 (Peters statement). The term exten-

sions in the CTEA thus facilitate the creation of original ex-

pression, both by individual authors and institutional creators

and publishers. See 144 Cong. Rec. H1459, 1461 (March 25,

1988). “[{T]he ultimate beneficiary is the public domain,

which will be greatly enriched by the added influx of crea-

tive works over the long term.” S. Rep. No. 104-315 at 12-

13.

3. Preserving Existing Works.

Congress further concluded that extending the term of

existing copyrights also promotes the progress of science by

“providing enhanced economic incentives to preserve exist-

ing works,” thereby enhancing the “long-term volume, vital-

ity, and accessibility of the public domain.” /d. at 3, 13. Ex-

tension is necessary given the high costs associated with the

preservation of many works—most notably motion pictures:

Because digital formatting enables the creation

of perfect reproductions at little or no cost, there

is a tremendous disincentive to investing the

huge sums of money necessary to transfer these

works to a digital format, absent some assurance

of an adequate return on that investment. By ex-

tending the current copyright term for works that

have not yet fallen into the public domain, in-

cluding the term for works-made-for-hire (e.g.,

motion pictures), the bill will create such an as-

surance.... More important, the American public

will benefit from having these cultural treasures

available in an easily reproducible and indelible

format.

Id. at 13.”

Once again, petitioners’ arguments to the contrary re-

flect nothing more than a basic policy disagreement. Peti-

tioners point to the Brief of Hal Roach Studios & Michael

Agee as Amici Curiae Supporting Petitioners [“Agee Brief”]

to argue that the extension of copyright terms undermines

restoration and preservation efforts. (Pet. Br. at 31-32.) The

Agee Brief, however, supports Congress’s judgment that the

preservation and storage of deteriorating film is costly. Jd. at

13. While the Agree Brief ultimately disagrees with Con-

gress’s determination of the best means to achieve that end,

that disagreement only reinforces the point that this is a pol-

icy dispute, not a legal one.'® Congress reasonably found

that extending the terms of existing copyrights would pro-

mote progress by creating incentives to preserve existing

works. There is no legal basis present here to disturb that

decision.

* See also 1995 House Hearings at 52 (statement of Jack Valenti)

(“The quality of the print is soon degraded. And there is no one around

who is going to invest the money for enhancement. Why? Because there

is no longer a financial incentive to rehabilitate and preserve because it

belongs to everybody and therefore it belongs to nobody. A public do-

main work is an orphan. . . . No one is responsible for its future life. But

everyone exploits its use until that time certain when it becomes soiled

and haggard and barren of all of its former virtues.”).

' Allowing libraries to distribute or exhibit a work is unlikely to

lead to the recoupment of the high preservation costs if everyone— in-

cluding those who have made no investment—can freely distribute and

exhibit the work. The Agee Brief’s desire to vest rights in libraries and

archives instead of the copyright owners is a policy decision best left to

the discretion of Congress and certainly not mandated by the Constitution

or the goal of “Progress.”

4. Disseminating Existing Works.

The CTEA also promotes progress by facilitating the

dissemination of existing copyrighted works. Congress con-

cluded that term extensions of existing copyrights would

create incentives for further distribution of original work.

H.R. Rep. No. 105-452 at 4 (1998) (extending “copyright

protection will be an incentive for U.S. authors [to] ... fur-

ther disseminate them to the public”). That conclusion is

well supported in the legislative record.

Disseminating a copyrighted work in a high-quality

form requires considerable investment by a copyright holder.

See 1995 House Hearings at 633 (joint statement of the Coa-

lition of Creators and Copyright Owners) (the “costs of qual-

ity production, distribution and advertising, and changing

technology, all require a major investment”). This is particu-

larly true today, when a copyright holder seeks to make

works available in the new media that have emerged in the

digital era. See id. at 593 (letter from Shira Perlmutter,

Catholic University of America). A copyright holder nearing

the end of a copyright term may simply choose not to make

the investment in disseminating original work in a high-

quality form. Jd.

Congress made the right policy decision. The “only

products that do tend to be made available after a copyright

expires are ‘down and dirty’ reproductions of such poor

quality that they degrade the original copyrighted work.” /d.

at 602 (commentary by Arthur R. Miller). By contrast, the

works of a copyright holder with an additional twenty years

of protection “are far more likely to be made widely avail-

able to the public in a form the public wants to enjoy.” Jd. at

633. Congress had strong empirical support for reaching

these conclusions. Jd. at 212 (statement of Bruce A. Lehman

discussing effect of NAFTA on older works). Progress is

promoted when works are affirmatively brought “to the con-

sumer who may enjoy it at a movie theater, at a home, in a

car, or in a retail establishment.” 144 Cong. Rec. H1458

(statement of Representative Coble). “Without that exploita-

tion, a work may lie dormant, never to be discovered or en-

joyed.” Id.

5. Harmonization.

Petitioners minimize Congress’s interest in “harmoniz-

ing” the copyright terms with those of the European Union,

arguing that certain aspects of United States and European

acerbates global disharmony. Pet. Br. at 42-43. Petitioners

also argue that lowering the “transaction costs for commer-

cial use of copyrighted work” in Europe, id. at 42, cannot

justify the CTEA. But petitioners ignore a key rationale be-

hind this legislation; “harmonizing U.S. copyright law to that

of the European Union” ensures “the continued economic

benefits of a healthy surplus balance of trade in the exploita-

tion of copyrighted works.” S. Rep. No. 104-315, at 3."

Representative Conyers explained this important objective

during the Congressional debate:

[Term extension] will allow the United States to

keep pace with the copyright terms of European

countries.... The world loves American-made

'! The Court of Appeals agreed, concluding:

The Act matches United States copyrights to the

terms of copyrights granted by the European Union ...

in an era of multinational publishers and instantaneous

electronic transmission, harmonization in this regard

has obvious practical benefits for the exploitation of

copyrights. This is a powerful indication that the

CTEA is a “necessary and proper” measure to meet

contemporary circumstances . . . the force of that evi-

dence is hardly diminished because, as the dissent cor-

rectly points out, the EU is not bound by the Copyright

Clause of our Constitution.

Eldred, 239 F.3d at 379.

music, movies, computer software and books.

Creators of these works should not be placed at a

competitive disadvantage in overseas markets.

By acting on copyright extension, Congress will

be furthering American innovation and protect-

ing American jobs.

144 Cong. Rec. at H1465. As Representative Sensenbrenner

recognized, that interest is satisfied by term extension, which

“ensures that one of America’s most valuable assets will

continue to dominate in global markets.” Jd. at H9949 (Oct.

7, 1998).

Thanks in large part to strong copyright law, entire in-

dustnes devoted to the creative process, consisting of indi-

vidual authors, publishers, distributors, and partnerships,

have emerged in the United States. See 144 Cong. Rec. at

H9951 (copynght “products such as movies, software, music

and books contributed more than $275 billion to the U.S.

economy in 1996 and employed more than 62 million work-

ers”). Fostering these creative industries promotes the pro-

gress of science.

B. Petitioners’ Per Se Rule Is Unsupported By The

“Limited Times” And Originality Requirements.

Petitioners also erroneously claim that a per se rule

against extensions of existing terms can be found in the “lim-

ited Times” and originality requirements of the Copyright

Clause. Rather than repeat the many arguments of the gov-

ernment and other amici refuting this claim, amici will ad-

dress three key reasons why petitioners are wrong.

First, the CTEA was not, as petitioners claim, an attempt

to “evade [the limited Times] constitutional constraint.” Pet.

Br. at 10. Congress considered the risk of perpetual copy-

right, and recognized that the Constitution “clearly precludes

Congress from granting unlimited protection for copyrighted

works.” S. Rep. No. 104-315 at 11; see also 1995 House

ee ee ee

Hearings at 94 (Representative Berman). Congress ex-

pressly disclaimed any intention to take “a step down the

road of perpetual copyright protection.” S. Rep. No. 104-

315 at 11. Rather, the CTEA was enacted to adhere to the

“emerging international standard,” which itself is not moving

“toward perpetual protection, but to a fixed term of protec-

tion based on the death of the author.” Jd. Indeed, Congress

explained that the driving principle behind the CTEA “re-

mains unchanged” and limited—copynght should “protect

the author and at least one generation of heirs.” Jd. The

CTEA “merely modifies the length of protection in nominal

terms” to better reflect this principle in light of “scientific

and demographic changes.” Jd. There is no question, then,

that the CTEA erants exclusive rights to authors “for limited

Times,” as the Constitution requires. See U.S. Const. art I. §

Second, the Framers rejected petitioners’ view that

at 17, and instead authorized Congress to establish copyright

for “limited times.” The notes of the debates from the Con-

stitutional Convention indicate that the Framers rejected nu-

merous constructions that would have limited copyright

terms to “a limited time” or “certain time.” James Madison,

Notes on Debates in the Federal Convention of 1787 (entry

for August 18, 1787). James Madison proposed “To secure

to literary authors their copy nghts for a limited time.” /d.

Charles Pinckney suggested: “To secure to Authors exclu-

sive rights for a certain time.” Jd. And Thomas Jefferson

'2 “(] jimited” connotes “confine[ment] within limits” and a state of

being “restricted in extent, number, or duration.” Webster's Third New

Int'l Dictionary 1312 (1993). To be limited, something must be “cir-

cumscribed within definite limits, bounded, [or] restricted.” The Com-

pact Oxford English Dictionary 966 (2d ed. 1999). Accordingly, Con-

gress has the power to grant exclusive rights only for times that are “con-

fine{d]” and “restricted in extent, number, or duration.”

urged adoption of even more restrictive language: “Monopo-

lies may be allowed to persons . . . for a term not exceed-

ing—years but for no longer term & no other purpose.” 5

Writings of Thomas Jefferson 113 (Ford ed., 1985). The

Framers, of course, rejected these alternatives, instead allow-

ing Congress to protect rights for “limited times.” The

CTEA complies with this requirement.

Third, with regard to originality, the CTEA does not

resurrect any works that have already entered the public do-

main; nor does it run afoul of this Court’s decision in Feist

Publications Inc. v. Rural Telephone Service Co., 499 U.S.

340 (1991), that “facts” and “ideas” are not copyrightable.

Petitioners may make use of any fact or idea contained in

any work the CTEA protects. Nothing in Feist, however,

prohibits Congress from adjusting the terms of existing

copyrights in order to better promote the progress of science.

C. Petitioners’ Per Se Rule Would Undermine Two

Centuries Of Unbroken Constitutional Tradition

Concerning Congress’s Copyright Power.

Petitioners’ per se argument, if accepted, would invali-

date more than a dozen copyright extension acts adopted by

Congress over the last two centuries, and would contradict

the long-standing and well-established historical practice

permitting Congress to readjust the terms of existing copy-

rights in order to respond to changing circumstances. ~ Peti-

'3 See Copyright Act of 1976, Pub. L. No. 94-553, §§ 106-109,

301-304, 90 Stat. 2541 (1976) (extending the existing copyright term for

twenty years); Act of December 31, 1974, Pub. L. No. 93-573, 88 Stat.

1873 (1974) (two-year retroactive extension); Act of October 25, 1972,

Pub. L. No. 92-566, 86 Stat. 1181 (1972) (two-year retroactive exten-

sion); Act of November 24, 1971, Pub. L. No. 92-170, 85 Stat. 490

(1971) (one-year retroactive extension); Act of December 17, 1970, Pub.

L. No. 91-555, 84 Stat. 1441 (1970) (one-year retroactive extension); Act

of December 16, 1969, Pub. L. No. 91-147, 83 Stat. 360 (1969) (one-year

retroactive extension); Act of July 23, 1968, Pub. L. No. 90-416, 82 Stat.

(footnote continues on next page)

tioners’ per se rule would even invalidate the original copy-

right statute adopted by the First Congress, the 1790 Act,

which granted to “any other person or persons ... who hath

or have purchased or legally acquired the copyright of any

such map, chart, book or books” a new and exclusive four-

teen-year copyright term, eligible for renewal if the copy-

right holder survived the term. Act of May 31, 1790, § 1, 1

Stat. 124 (1790).'*

This Court, however, has made clear that “(t]he actions

of the First Congress ... are [themselves] persuasive evi-

dence of what the Constitution means.” Harmelin v. Michi-

gan, 501 U.S. 957, 980 (1991). That petitioners’ approach

would also invalidate numerous similar Congressional en-

actments passed over the next two centuries is overwhelming

evidence that it is in error:

The construction placed upon the Constitution by

the first act of 1790, and the act of 1802, by the

men who were contemporary with its formation,

many of whom were members of the convention

which framed it, is of itself entitled to very great

397 (1968) (one-year retroactive extension); Act of November 16, 1967,

Pub. L. No. 90-141, 81 Stat. 464 (1967) (one-year retroactive extension);

Act of August 28, 1965, Pub. L. No. 89-142, 79 Stat. 581 (1965) (two-

year retroactive extension); Act of September 19, 1962, Pub. L. No. 87-

668, 76 Stat. 555 (1962) (three-year retroactive extension); Act of March

4, 1909, § 24, 35 Stat. 1075, 1080-81 (1909) (up to fourteen-year retroac-

tive extension authorized for certain works); Act of Feb. 3, 1831, 4 Stat.

436 (1831) (up to fourteen-year retroactive extension authorized for cer-

tain works); Act of May 31, 1790, 1 Stat. 124 (1790) (authorizing a four-

teen-year term for all works, including those works already under exist-

ing copyright terms for up to seven years).

* Prior to the 1790 Act, no federal copyright existed. Yet, granting

new federal protections to those works previously protected under state

gress required no quid pro quo for the new federal protections, as peti-

tioners’ view would require.

weight, and when it is remembered that the

rights thus established have not been disputed

during a period of [over two centuries], it is al-

most conclusive.

Burrows-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 57

(1884).

Petitioners try to discount the significance of the 1790

Act as an aberration that “stands for nothing more than the

need of the First Congress to address fundamental issues of

transition from a state federation to a national government.”

Pet. Br. at 29. But petitioners fail to explain why Congress

should not be allowed to address other significant changes

affecting copyright, such as those involving demographics,

commerce, and technology. Moreover, petitioners’ argument

that the federal grant under the 1790 Act can “be understood

as a compensation for the expected displacement of a state-

protected right,” id., does not change the fact that the first

Congress extended the copyright for works that were already

in existence (as opposed to simply replicating the remaining

state-law terms). Thus, petitioners effectively confirm Con-

gress’s authority to adjust the duration of existing copyrights

in order to promote a broad range of purposes.

In any event, there is nothing in the legislative history of

the 1790 Act indicating that Congress was granting itself a

one-time-only exemption to readjust the scope and duration

of existing copyrights—or that the Constitution created such

a distinction—and the practices of other early Congresses

suggest the contrary. Those Congresses recognized their

continuing authority to readjust copyrights and patents in

order to meet the ends of Article I, § 8. See generally Brief

Amici Curiae of Tyler T. Ochoa In Support of Petitioners at

22-24 (early Congresses understood that they could extend

patent and copyright terms for “equitable” and “utilitarian”

reasons).'°

Finally, even if the acts of early Congresses had not

made the Framers’ intent so clear, interpreting the Copynght

Clause to require a fixed term that can never be changed

would provide a meaningless limit on Congress’s power.

Under petitioners’ view, Congress could not extend existing

copyrights for even a day; at the same time, Congress could

set a one-time term of 500 years, as long as the term estab-

lished were never changed. Such an inflexible view is con-

trary to the purposes of the Copyright Clause and would

place a constitutional straightjacket on future Congresses,

making them powerless to prevent any further decay in the

strength of copynght law.

'S Other examples include Congress's action, in 1808, to extend by

private act the term of a patent owned by Oliver Evans. See An Act for

the Relief of Oliver Evans, ch. 13, 6 Stat. 70 (1808). Similarly, in 1828,

Congress extended the copyright of James Rowlett. See An Act to Con-

tinue the Copy-Right to John Rowlett, ch. 145, 6 Stat. 389 (1828). In

1831, Congress extended the existing copyright term to twenty-eight

years “from the time of recording the title thereof,” and allowed surviv-

ing widows or children of deceased authors to renew the term for an

additional fourteen years. Act of Feb. 3, 1831, §§ 1, 2, 4 Stat. at 436-37.

And in 1836, Congress permitted existing patent-holders to follow a

specified procedure in seeking to extend the length of a patent term by

seven years. See Act of July 4, 1836, ch. 357, §§ 5 & 18, 5 Stat. 117,

117, 124-25 (1836). Cf Tyler T. Ochoa, Patent and Copyright Term

Extensions and the Constitution: A Historical Perspective, 49 J. Copy-

right Soc’y USA 19, 124-25 (2001) (the view that “retroactive term ex-

tension is absolutely forbidden” has “appealing simplicity,” but “is diffi-

cult to maintain in light of the long history of patent term extensions

which were upheld in the mid-nineteenth century’”’).

Ill. CONGRESS’S EXERCISE OF ITS COPYRIGHT

POWER TO EXTEND THE TERM OF EXISTING

WORKS DOES NOT INVOKE HEIGHTENED

SCRUTINY UNDER THE FIRST AMENDMENT.

Petitioners also challenge the CTEA on the ground that

it violates the First Amendment, Pet. Br. at 33-47, arguing

that it, “like all regulation that allocates the right to speak,” is

subject to intermediate scrutiny under the standard set forth

in Turner Broadcasting Systems v. FCC, 520 U.S. 180

(1997)}—and that the CTEA fails this test. /d. at 39. While

petitioners only directly challenge the constitutionality of the

CTEA’s term extension of existing copyright, their argument

for the application of intermediate scrutiny would also apply

to Congress’s prospective protections of copyrights, and to

all other copyright laws—past, present, and future. See id. at

38-39. This position cannot be squared with the historic ex-

ercise of Congress’s power under the Copyright Clause, the

First Amendment, or the decisions of this Court related to

both constitutional provisions.

immune from all First Amendment considerations. In

Harper & Row, Publishers, Inc. v. Nation Enterprises, 471

U.S. 539 (1985), this Court held that core exercises of Con-

gress’s copyright power “strike[] a definitional balance” with

the First Amendment. 471 U.S. at 556 (citation quotations

omitted). For example, this Court has held that copyright

may not legally protect “ideas,” but only the “form of ex-

pression.” See N.Y. Times Co. v. United States, 403 U.S.

713, 726 n.* (1971) (Brennan, J., concurring). Copyrnght

laws must also permit “fair use” of works that are not in the

public domain. Harper & Row, 471 U.S. at 560. Copy-

right’s protections—and the limitations on those protec-

tions—thus combine to “assure{] authors the nght to their

original expression, but encourage{] others to build freely

upon the ideas and information conveyed in a work,” pro-

moting the “ends” of the Copyright Clause. Feist Publ ’ns.,

Inc., 499 U.S. at 349-50.

Given these limitations, amici certainly agree with peti-

tioners that Congress could not eliminate the idea/expression

dichotomy or the fair use doctrine. Pet. Br. at 35. Amici also

agree that a content-based copynght act would not be im-

mune from constitutional attack. Jd. But the fact that some

exercises of Congress’s power under the Copyright Clause

might, in some circumstances, violate speech-protection

principles is no reason to apply heightened scrutiny to all

exercises of Congress’s power under that Clause.

In this case, the CTEA is not content based, and does

not eliminate the idea/expression dichotomy or the fair use

doctrine. Thus, there is no basis for the judicial intervention

that heightened scrutiny would entail. Rather, because the

CTEA is a core exercise of Congress’s copyright power, re-

flecting a neutral policy choice by Congress regarding the

appropriate duration of copyright, it should be considered a

policy choice the Framers entrusted to Congress.

Thus, in enacting the CTEA, Congress plainly struck the

“definitional balance” between the Copyright Clause and the

First Amendment that this Court set forth in Harper & Row.

Congress left intact the provisions of the Copyright Act of

1976, ensuring that only “original” expression is protected,

see 17 U.S.C. § 102(a), and that the ideas and facts underly-

ing that original expression remain in the public domain, see

id. § 102(b), so that persons wishing to exploit unoriginal

works, ideas, or facts may do so. Congress also kept intact

the Copyright Act’s provision ensuring that even original

expression is subject to “fair” uses, see id. § 107, so that per-

sons wishing to make fair use of protected original expres-

sion may do so. Petitioners may thus use the ideas contained

in works protected by the CTEA, and may make “fair” uses

of expression that is otherwise protected by the CTEA. Asa

result, petitioners cannot offer any reason to deem the CTEA

as less than fully protective of their First Amendment nghts

under Harper & Row.'®

Instead, petitioners argue that “copyright law may be

upheld against First Amendment challenge insofar—but only

insofar—as it protects an ‘engine of free expression,”” Pet

Br. at 36-37 (quoting Harper & Row, 471 U.S. at 558), and

that copyright law should be invalidated under the First

Amendment if its restrictions “merely inhibit access to ideas

without any countervailing benefit,” id. at 37 (quoting Sony,

464 U.S. at 450-51). Petitioners’ contention misapprehends

the nature of Congress’s power under the Copyright Clause,

and this Court’s precedents about how that power comports

with the First Amendment’s protections.

As an initial matter, the claim for heightened scrutiny

proceeds from premises that are inapposite in the context of

a copyright term extension—or of copyright itself. Thus,

relying on Turner, petitioners contend that the CTEA can

'° According to petitioners, Harper & Row does not apply to facial

challenges to copyright statutes—but this notion has no support in

Harper & Row or any subsequent case of this Court. Petitioners agree

that the Court in Harper & Row “properly rejected The Nation’s argu-

ment” that “it had a First Amendment right to trespass on Harper &

Row’s exclusive right.” Pet. Br. at 34. But that conclusion was based on

the definitional balance the Copyright Act of 1976 struck with the First

Amendment, see 471 U.S. at 556 & 560, not on the particular method by

which The Nation challenged that definitional balance. Under petition-

ers’ view, if they—instead of filing this lawsuit—had simply republished

works uniquely protected by the CTEA, they would have had no subse-

quent First Amendment defense to a claim of infringement. But petition-

ers fail to explain why any of the First Amendment interests they assert

here would apply any less to Eldred-the-infringer (asserting a First

Amendment right to copy expression protected by the CTEA) than to

Eldred-the-challenger (also asserting a First Amendment right to copy

expression protected by the CTEA). Such arbitrary line drawing finds no

support in the First Amendment. It is the substance of the copyright pro-

tection that matters—not how a challenge is framed.

“withstand First Amendment review only ... if it advances

important governmental interests unrelated to the suppres-

sion of free speech.” Pet. Br. at 39. But, of course, copy-

right itself inherently advances an important governmental

interest—the promotion of progress—by means of restricting

some speech: i.e., the unauthorized copying of protected

works. Thus, contrary to petitioners’ contentions, allocations

of copyright are not “wholly foreign to the First Amend-

ment,” Pet. Br. at 41 (quoting Buckley v. Valeo, 424 U.S. 1,

48-49 (1976)), or “mere assertion[s] of dysfunction or failure

in a speech market,” id. at 39 (quoting Turner Broad. Sys. v.

FCC, 512 U.S. 622, 640 (1994)). Rather, they reflect a

choice made by the Framers and enshrined in the Copyright

Clause of the Constitution. By stimulating the creation of

“useful works for the general public good,” Harper & Row,

471 U.S. at 558 (quoting Aiken, 422 U.S. at 156), copyright

“itself” is an “engine of free expression.” Jd.

Second, applying Turner here would require this Court

to second-guess all Congressional enactments affecting the

scope and duration of copyright, in direct contravention of

countless decisions of this Court repeatedly affirming that

such decisions vest in Congress. See, e.g., Fox Film Corp.,

286 U.S. at 127; Sony, 464 U.S. at 431; Pennock, 27 U.S. at

17; Diamond, 447 U.S. at 317; Parker, 437 U.S. at 595;

Deepsouth Packing, 406 U.S. at 529-30; Stewart, 495 U.S. at

228; Bonito Boats, Inc., 489 U.S. at 168. There is no better

example of the problematic nature of transferring such deci-

sion-making to the courts than the issues posed in a situation

such as this, where Congress—trelying on the sort of infor-

mation and weighing the sort of factors best considered by

the legislative branch—made the decision to extend copy-

right terms for the variety of reasons discussed in Section II,

supra. This balancing must “be left to Congress,” because it

is “beyond the competence” of the courts. Teleprompter

Corp. v. Columbia Broad. Sys., Inc., 415 U.S. 394, 413-14 &

n.15 (1974).

Finally, petitioners argue that 7urner scrutiny is appro-

priate because the expansion of copyright protection over

time, along with changes in technology, have given copy-

right owners increased nights to control access to their work.

Pet. Br. at 38. But the expansion of copyright protection re-

flects both the deference this Court properly affords Con-

gress and Congress’s consistent responsiveness to commer-

cial, demographic, and technological changes in crafting

“an engine of free expression.” Indeed, the emerging threat

to creative expression is not Congressional protection of

those protections, given the low-cost, high-dose infringement

that can occur via the Internet.

In the end, petitioners’ contention that Turner should

apply to the CTEA falls of its own weight.'’ Absent extreme

cases, there are no judicially manageable standards to replace

'’ Even if Turner applied to core exercises of Congress’s copyright

The overriding government interest here is Congress’s desire to create

“Progress” under Article I, § 8, an interest embedded in the Constitution.

The only questions under Turner are whether the CTEA furthers the in-

terests of Article I, § 8, and whether, in so doing, the CTEA burdens sub-

stantially more speech than necessary. See Turner Broad. Sys., 512 U.S.

at 662. Petitioners aptly frame the issue: “Such an incentive to create

[more speech] could qualify as an ‘important government interest’ if

Congress could reasonably have believed that the restriction it imposed

through the CTEA’s retroactive copyright extensions actually advanced

the incentive to create.” Pet. Br. at 41. As we explain above, Congress

could—and did—treasonably believe that extensions of existing copyright

create incentives for more speech.

Ultimately, there can be no denying that Congress drafted the

CTEA with care and precision. It did not pick a twenty-year extension

from a hat: rather, it pegged that extension to changes in life expectancy,

commercial circumstances, and evolving international norms. No nar-

rower legislation could have accomplished Congress’s goals.

Congress’s judgments regarding the economic, social,

demographic and technological factors that have led it to ex-

tend copyright terms throughout history, and in many in-

stances to make those extensions applicable to existing

works. Moreover, such heightened scrutiny is unnecessary

given the speech-protecting principles found in copyright

law itself, see, e.g., Campbell v. Acuff-Rose Music, Inc., 510

U.S. 569, 575 n.5 (1994), such as the idea/expression dichot-

omy and fair use doctrine. Treating copyright legislation

like “all other regulation” under Turner ignores the presence

of these built-in limitations and protections in Copyright

Clause jurisprudence, and is at odds with this Court’s hold-

ing in Harper & Row.

CONCLUSION

For the foregoing reasons, the decision of the U.S. Court

of Appeals for the D.C. Circuit should be affirmed.

Respectfully submitted,

RONALD A. KLAIN

(Counsel of Record)

ARTHUR B. CULVAHOUSE, JR.

JESSICA DAVIDSON MILLER

MATTHEW M. StiORS

O’MELVENY & MYERS LLP

555 13th Street, N.W.

Washington, D.C. 20004

(202) 383-5300

ROBERT M. SCHWARTZ

VICTOR JIH

O’MELVENY & MYERS LLP

1999 Avenue of the Stars

Los Angeles, CA 90067

(310) 553-6700

Attorneys for Amici Curiae

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.