As Congress Giveth, So Congress Taketh Away: the Supreme Court Assures Congressional Authority to Retroactively Extend Copyright Terms in Eldred v. Ashcroft - Darcy L. Jones

• Citation: Vol. 55 No. 2
• Publication year: 2004

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As Congress Giveth, So Congress Taketh

Away: The Supreme Court Assures Congressional Authority to Retroactively Extend Copyright Terms in Eldred v. Ashcroft^*

In Eldred v. Ashcroft ("Eldred"),¹ the "so-called 'Mickey Mouse case,'"² the United States Supreme Court held that the Copyright Term Extension Act³ ("CTEA") did not violate the First Amendment and that

Congress did not exceed its power under the Copyright Clause⁴ when it enacted CTEA provisions enlarging terms for both future and previously published works with existing copyrights by twenty years.⁵ Thus the Court announced that it would defer to Congress in matters related to copyright legislation.⁶ While the case is a narrow, cautious decision that plows little new Constitutional ground, the Court clearly indicated it would find congressional acts under the Copyright Clause invalid.

I. Factual Background

In the spring of 1995, Eric Eldred, a father and technical analyst for a computer magazine, dismayed by his daughters' lack of appreciation for classic literature, decided to create a web site to inspire his daughters to read more. After scanning and posting a few classic works of literature, Eldred decided to expand his site to include rare and hard-to-find books. Eldred named his growing site Eldritchpress.org. He added several more works whose copyrights had expired, and Eldritch-press.org eventually became an electronic library of works primarily available in the public domain. The site won numerous awards and was recognized in 1997 by the National Endowment for the Humanities as one of the twenty best humanities sites on the Internet.⁷

In 1998 Congress passed the CTEA, which extended copyright protection an additional twenty years, not only for future published works, but also for all works copyrighted after January 1, 1923.⁸ Eric Eldred, who hoped to post a number of works copyrighted in 1923 with terms that expired in 1999 on his Internet site, saw his efforts thwarted by the CTEA, which extended the copyright terms for all works copyrighted in 1923 to the year 2019.⁹

In Eldred v. Reno,¹⁰ Eldred and other individuals, associations, and organizations that utilized and distributed copyrighted works in the public domain, both commercially and non-commercially, challenged the constitutionality of the CTEA. Plaintiffs alleged that they prepared to use works in the public domain created before 1923 that "but for the CTEA . . . could have legally [been] copied, distributed, or performed."¹¹

By retroactively extending copyright protection, plaintiffs argued, Congress exceeded its enumerated power under the Copyright Clause, which only allowed Congress to extend copyright for "'limited [t]imes.'"¹² Plaintiffs also asserted that the CTEA violated the First Amendment as a regulation of speech, which is subject to heightened judicial scrutiny.¹³

On cross-motions for judgment on the pleadings, the district court granted defendant's motion and denied plaintiffs' motion, concludingthat plaintiffs had "no First Amendment rights to use the copyrighted works of others" and that Congress acted within its authority under the Copyright Clause to enact retrospective copyright laws.¹⁴ On appeal the United States Court of Appeals for the District of Columbia affirmed the district court's ruling, reasoning that there was "nothing in text or in history that suggests that a term of years for a copyright is not a 'limited Time' if it may later be extended for another 'limited Time.'"¹⁵ The court concluded that the CTEA was a "'necessary and proper' measure to meet contemporary circumstances rather than a step on the way to making copyrights perpetual."¹⁶ The court also declared that, because "the regime of copyright itself respects and adequately safeguards the freedom of speech protected by the First Amendment" by protecting only an author's expression and not underlying facts, copyrights were "categorically immune from challenges under the First Amendment."¹⁷

The Supreme Court granted certiori in February 2002 to determine whether Congress had the power under the Copyright Clause to retroactively extend the term of existing copyrights and whether the CTEA violated the First Amendment's free speech guarantee.¹⁸ In a 72 decision, the Court backed away from the appellate court's declaration that all copyrights were "categorically immune" from First Amendment challenges,¹⁹ instead holding that First Amendment scrutiny was not necessary because Congress did not alter traditional copyright protection under the CTEA.²⁰ Reasoning that Congress acts within its authority when it enacts legislation that furthers the goals of the Copyright Clause and that these goals may be rationally related to Congress's decision to extend the limited terms of copyright protection for future as well as existing works, the Court upheld the constitutionality of the CTEA.²¹

II. Legal Background

A. A Brief History of U.S. Copyright Legislation

Article I, section 8, of the United States Constitution provides that "Congress shall have the power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."²² Congress passed the first copyright act shortly after the new Constitution was ratified, in 1790.²³ The Copyright Act of 1790 granted copyright protection for existing works previously protected by state copyright laws and future copyrightable works for fourteen years.²⁴ This initial term could be renewed for an additional fourteen years, provided the author was still alive when the initial term expired, for a possible total term of twenty-eight years.²⁵

Congress passed copyright protection laws on several more occasions, often to bring United States copyright law in line with international copyright protections. These acts expanded copyright terms for both existing and future copyrighted works.²⁶ In 1831, for instance, partially in response to concerns that foreign authors received greater copyright protections than American authors,²⁷ Congress lengthened the initial term of copyright protection for existing and future works to twenty-eight years, renewable for an additional fourteen years, for a possible total term of forty-two years.²⁸ In 1909 despite arguments by authors such as Samuel Clemens that copyright protection should last for a term of life of the author plus fifty years²⁹ (the length of protection granted by other foreign countries under the Berne Convention),³⁰ Congress only expanded the length of the renewal term for existing and future works to twenty-eight years, making copyright protection available for a total of fifty-six years.³¹

Congress did not make significant changes to copyright terms until 1976,³² when it passed sweeping legislation changing the copyright term to a single term of life of the author plus fifty years,³³ aligning the copyright term to the international copyright term in effect under the Berne Convention.³⁴ This new term did not apply to pre-existing works, although the renewal term for works already in existence was extended to forty-seven years, for a total possible term of seventy-five years.³⁵

B. Case Law Interpreting Congressional Power Under the Copyright Clause

The Supreme Court has historically shown great deference to Congress under the Copyright Clause in the realms of both patent and copyright. In an expansive interpretation of congressional authority under the Copyright Clause in McClurg v. Kingsland,³⁶ in 1843, the Court held that there were "no restraints" on congressional power to legislate on the subject of patents and there was "no limitation of their right to modify [patents] at their pleasure."³⁷ In 1884 the Court in Burrow-Giles Lithographic Co. v. Sarony³⁸ held that congressional authority under the Copyright Clause should be given "very great" and "almost conclusive" weight.³⁹

In more modern times, the Court has been equally deferential. In 1966 the Court in Graham v. John Deere Co.⁴⁰ stated that Congress may "implement the stated purpose of the Framers by selecting the policy, which in its judgment best effectuates the constitutional aim" of its patent power.⁴¹ Interpreting the meaning of "limited [t]imes" in the preamble of the Copyright Clause, the Court in 1981 denied certiorari to review an appellate court decision rejecting the argument "that the introductory language . . . constitutes a limit on congressional power."⁴² In 1984 the Court determined that "[a]s the text of the Constitution makes plain, it is Congress that has been assigned the task of defining the scope of the limited monopoly that should be granted to authors."⁴³ The Court in Bonito Boats, Inc. v. Thunder Craft Boats, Inc.⁴⁴ stated that "[i]t is for Congress to determine if the present system" appropriately effectuates the goals of the Copyright Clause.⁴⁵ And in perhaps its strongest declaration of deference to congressional authority regarding copyright power, the Court in 1990 announced, "it is not our role to alter the delicate balance Congress has labored to achieve" through its copyright legislation.⁴⁶

C. Copyright Law and the First Amendment

Both Congress and the Court have addressed the interplay of the First Amendment⁴⁷ and principles of free speech with copyright law, with the Court declaring in 1985 that "the Framers intended copyright itself to be the engine of free expression. By establishing a marketable right to the use of one's expression, copyright supplies the economic incentive to create and disseminate ideas."⁴⁸ Although copyright protection limits freedom of expression, Congress made a distinction between the protection of ideas and expression in the Copyright Act of 1976, which provides that copyright protection does not extend to ideas.⁴⁹ Discussing this distinction, the Court in Harper & Row Publishers, Inc. v. Nation Enterprises⁵⁰ declared that this "idea/expression dichotomy 'strike[s] a definitional...