Copyright Restoration Upheld: Supreme Court Says Foreign Works can be Removed From the Public Domain in Golan v. Holder

January 23, 2012

Lawrence Golan is a professor of music at the University of Denver and the conductor of the Lamont Symphony Orchestra. He planned to conduct a symphony composed by Russian composer Shostakovich in 1937. Because Shostakovich was a pre-1973 Russian composer, his works were not protected in the United States and were in the public domain for many years. Professor Golan ran into a problem: as a result of Congress passing Section 514 of the Uruguay Round Agreements Act (URAA) in 1994, Shostakovich’s work and millions of other foreign works were removed from the public domain and copyright protection was “restored.” 

Professor Golan, joined by a number of orchestra conductors, educators, performers and others, challenged the “restoration” of copyright protection as violating the Constitution’s Copyright Clause and the First Amendment’s guarantee of free expression, warning of serious policy consequences if the statute was upheld, including that the statute makes it too expensive for all but the biggest orchestras to perform many classic works from the mid-1900s.

The case reached the Supreme Court, which, on Jan. 18, 2012, in a 6-2 decision written by Justice Ruth Bader Ginsburg (with Justice Kagan recusing herself), held that Congress did not exceed its authority under the Copyright Clause and that removing works from the public domain did not violate the First Amendment’s guarantee of free expression. This case is a follow-up to Eldred v. Ashcroft, in which the Court upheld the 1998 Copyright Term Extension Act, and is important because:     

  • The decision affirms Congress’ intent to move away from a U.S.-based copyright system to a system of international copyright participation and protection.
  • The decision affirms Congress’ broad authority to regulate copyrights, including broadly upholding Congress’ power to withdraw works from the public domain.
  • The decision will mean that many musicians, orchestras and other artists will have to pay to keep using now-copyrighted foreign works that were previously free to use, even though the author of the work may have died long ago and never expected fees for the use of his or her work in the United States. These fees may prevent small orchestras, high school and university ensembles, and other artists and groups from performing works by 20th century composers.
  • The decision may impact the efforts of companies who are trying to make works in the public domain freely accessible on the Internet.

Section 514’s Restoration of Copyright Protection

In 1994, to comport with an international copyright treaty known as the Berne Convention, which requires member countries to ensure that foreign-originated works protected by copyright in those countries also receive copyright protections in member countries until such a time as the protection expires “in the country of origin,” Congress adopted Section 514 of the URAA, which moved certain foreign works from the public domain back into copyright. The “restored” copyrighted works are decades old, most of which were published abroad from 1923 to 1989, and include paintings by Pablo Picasso, films by Alfred Hitchcock, writings by J.R.R. Tolkien, and compositions from several Russian composers, including Stravinsky and Shostakovich. When Congress removed these works from the public domain, concerns arose that Congress exceeded “the traditional contours of copyright protection.”

The Majority’s Opinion 

Writing for the majority, Justice Ginsburg endorsed Congress’s main goal in passing the 1994 law, namely to ensure that “most works, whether foreign or domestic, would be governed by the same legal regime.” In upholding the law, Justice Ginsburg focused more upon the history of international practice on copyrights than the practical implications of the statute.

The Court rejected the petitioners’ argument that the purpose of the Copyright Clause — to “promote the progress of science” — must encourage the creation of new works. The Court held that the clause should be interpreted broadly, noting that “[t]he copyright clause does not demand that each copyright protection, examined discretely, operate to induce new works.” Instead, the Court opined that the general purpose of the clause includes “the dissemination of existing and future works” as a means to promote science, and thus, concluded that the statute falls “comfortably” within Congress’ Copyright Clause authority.

The Court also rejected the petitioners’ argument that removing works from the public domain violates the First Amendment. First, the Court concluded that the petitioners did not have a “vested” interest in public domain works. The Court opined that “[o]nce the term of protection ends, the works do not revest in any rightholder. Instead, the works simply lapse into the public domain.” Second, the Court concluded that free speech interests are adequately protected by the fair use doctrine and the idea/expression dichotomy, which provides copyright protection for only the expression of an idea and not idea itself. “Nothing in the historical record, congressional practice, or our own jurisprudence warrants exceptional First Amendment solicitude for copyrighted works that were once in the public domain,” Justice Ginsburg wrote. 

The Dissent

The majority opinion applied a formulaic approach and gave little attention to the policy implications of the statute. Justice Stephen Breyer, joined by Justice Samuel Alito, Jr., dissented and focused on the practical implications of copyright restoration. To start, Justice Breyer criticized the majority’s interpretation of the Copyright Clause, writing that the majority ignored an important purpose of the clause, namely to encourage authors and artists to produce new works. The legislation, Justice Breyer wrote, “does not encourage anyone to produce a single new work. By definition, it bestows monetary rewards only on owners of old works — works that have already been created and already are in the American public domain.” Justice Breyer thus disagreed that the Copyright Clause “empower[ed] Congress to enact a statute that withdraws works from the public domain, brings about higher prices and costs, and in doing so seriously restricts dissemination, particularly to those who need it for scholarly, educational, or cultural purposes — all without providing any additional incentive for the production of new material.” “If a school orchestra or other nonprofit organization cannot afford the new charges, so be it,” Justice Breyer wrote. “They will have to do without — aggravating the already serious problem of cultural education in the United States.”

Justice Breyer also criticized the majority’s approach for not properly considering the removal of material from the public domain. “By removing material from the public domain, the statute, in literal terms, ‘abridges’ a pre-existing freedom to speak.” “Taken together, these speech-related harms (e.g., restricting use of previously available material; reversing payment expectations; rewarding rent-seekers at the public’s expense) at least show the presence of a First Amendment interest.” Justice Breyer concluded that “by withdrawing material from the public domain, the statute inhibits an important preexisting flow of information,” and therefore “the Copyright Clause, interpreted in the light of the First Amendment, does not authorize Congress to enact this statute.”


Consistent with the purpose of enacting Section 514, the Court’s ruling affirms Congress’ desire to put foreign works on equal footing with U.S. works. For example, “Prokofiev’s ‘Peter and the Wolf’ could once be performed free of charge,” but now, Justice Ginsburg wrote, “[t]he right to perform it must be obtained in the marketplace. This is the same marketplace, of course, that exists for the music of Prokofiev’s U.S. contemporaries: works of Copland and Bernstein, for example, that enjoy copyright protection, but nevertheless appear regularly in the programs of U.S. concertgoers.” Thus, it is intended that the works play under the same rules.

Nevertheless, moving forward under this statute, persons wanting to use foreign works that were once in the public domain, such as universities, film collectors, musicians, database compilers or scholars, may be forced to ask the following questions before using such works: “Is the work eligible for restoration under the statute? If so, who now holds the copyright — the author? an heir? a publisher? an association? a long-lost cousin? Whom must we contact? What is the address? Suppose no one answers? How do we conduct a negotiation?” As Justice Breyer noted in his dissent, finding the answers to these questions will undoubtedly drive up administrative costs, particularly for “orphan works,” which are works with unknown or uncertain authors and are often older, more obscure, and of minimal commercial value. It may be difficult if not impossible to track down owners of orphan works, and the costs associated with tracking them down, as Justice Breyer wrote, may “threaten to limit severely the distribution and use of those works — works which, despite their characteristic lack of economic value, can prove culturally invaluable.”   


This article was originally published by Bingham McCutchen LLP.