Congressional authority over intellectual property policy after Eldred v. Ashcroft: deference, empty limitations, and risks to the public domain.

• Author: Shipley, David E.
• Position: Symposium: Interdisciplinary Conference on the Impact of Technological Change on the Creation, Dissemination, and Protection of Intellectual Property

1. INTRODUCTION

   The United States Supreme Court upheld the Copyright Term Extension Act of 19981 (CTEA) in Eldred v. Ashcroft. (2) The Court ruled that Congress had not exceeded its authority under the Copyright Clause (3) by extending the copyright term twenty years and applying this extension retroactively to existing copyrighted works that otherwise would have entered the public domain at the end of their current, nonextended terms. (4) The majority found a rational basis for CTEA and showed great deference to the authority of Congress to set policy that, in its judgment, effectuates the aims of the Copyright Clause. (5) Although this deference to Congress' judgment is not out of the ordinary, (6) the degree of deference that permeates the majority opinion in Eldred (7) fuels the debate regarding congressional authority under the Copyright Clause and other provisions of the Constitution to alter fundamental principles of United States' intellectual property policy (8) announced in cases like Sears, Roebuck & Co. v. Stiffel Co.; Compco Corp. v. Day-Brite Lighting, Inc.; Graham v. John Deere Co. of Kansas City; Bonito Boats, Inc. v. Thunder Craft Boats, Inc.; TrafFix Devices, Inc. v. Marketing Displays, Inc.; and Dastar Corp. v. Twentieth Century Fox Film Corp. (9)

   In these important decisions the Court addressed the public's right to use inventions and works of authorship that are in the public domain because of an expired or invalid patent, or an expired copyright. It struck down attempts to restrict the copying of public domain works under state unfair competition law and Lanham Act theories of relief. (10) Notwithstanding Congress' authority to enact intellectual property laws, like the Lanham Act, that are beyond the scope of the Copyright Clause, (11) the Supreme Court has been troubled by interpretations of trademark and unfair competition law that affords patent-like or copyright-like protection evading the "limited times" restriction on patents and copyrights imposed by the Constitution, and thereby attempts to grant proprietary rights over materials in the public domain. (12) These decisions underscore the Supreme Court's statement in Bonito Boats that the Copyright Clause serves as a limitation on congressional authority as well as a grant of power to the legislative branch. (13) They are consistent with the Court's historic copyright jurisprudence that emphasizes the public purposes embodied in the Copyright Clause instead of focusing on the proprietary interests of authors and/or copyright owners. (14)

   On the surface, Eldred is not at odds with decisions like Dastar, WalMart, and TrafFix because Congress passed CTEA under its Copyright Clause authority and CTEA did not remove works from the public domain. (15) Those decisions involved interpretation of the Lanham Act, a statute enacted by Congress under its Commerce Clause authority. (16) Dastar even cites Eldred for the proposition that Congress cannot create a species of perpetual patent or copyright. (17) Still, given the Supreme Court's expansive statements in Eldred about the authority of Congress under the Copyright Clause coupled with its treatment of several of its previous statements on intellectual property policy as well as its general reluctance to strike down legislation, (18) it is appropriate to ask whether there are any limits on the Court's deference to Congress in setting intellectual property policy under the Copyright Clause. Does Congress enjoy a carte blanche to legislate on intellectual property matters as it deems appropriate? Has the Court backed away from its posture regarding copyright law expressed in the Feist decision (19) to return to a relationship with Congress on copyright law that is deferential to the point of servility? (20)

   The answer to these questions might be "yes." The Court's deference to Congress coupled with its reliance on the unbroken history of congressional practice granting term extensions, (21) and statements regarding rewarding copyright owners and the differences between the patent and copyright monopolies (22) have been critical in recent decisions upholding section 514 of the Uruguay Round Agreements Act (URAA) that provides for the restoration of copyright protection for certain works by foreign authors that had entered the public domain. (23) Another court, relying on Eldred, upheld the Copyright Renewal Act and the Berne Convention Implementation Act as well as CTEA. (24) Appropriate deference to Congress also played an important role in several decisions interpreting an anti-bootlegging statute that affords protection to live performances which are recorded without permission of the performers. The cases are split on whether the anti-bootlegging statute violates the Copyright Clause's "limited times" and "writings" requirements, and over whether the statute can be upheld under the Commerce Clause or the Treaty Power. (25)

   This article discusses these post-Eldred decisions, the expansive authority of Congress under the Copyright Clause, the meaning of the Clause's limitations in the face of the Court's deference to congressional authority, and the significant risk of encroachment on the public domain resulting from Congress' exercise of power under the Copyright Clause. Justice Stevens concluded his Eldred dissent with this prophetic statement:

   By failing to protect the public interest in free access to the products of inventive and artistic genius--indeed, by virtually ignoring the central purpose of the Copyright/Patent Clause--the Court has quitclaimed to Congress its principal responsibility in this area of the law. Fairly read, the Court has stated that Congress' actions under the Copyright/Patent Clause are, for all intents and purposes, judicially unreviewable. (26) These recent decisions, applying Eldred to uphold challenged legislation, show that it may not be necessary for Congress to turn to its authority under the Commerce Clause or the Treaty Power in order to enact legislation that arguably escapes the limitations in the Copyright Clause. (27) Given Congress' exercise of general legislative powers, the Court's deference to Congress' judgment in exercising its considerable power under the Copyright Clause as well as its historic reluctance to strike down intellectual property legislation, the Clause's limitations on congressional authority could become meaningless and this puts the public domain at risk. (28)

2. THE PUBLIC DOMAIN, THE COURT'S DEFERENCE TO CONGRESS, AND THE DIFFERENCES BETWEEN PATENTS AND COPYRIGHTS

   Much has been written about the public domain. (29) There is no single definition of the metes and bounds of this area that is the "'outside' of the intellectual property system, the material that is free for all to use and build upon." (30) It is contended that this vast area, unlike public lands owned by the government, is owned by the public. (31) The public domain is more than the facts, ideas, and concepts which cannot be protected by copyright (32) as well as those discoveries which do not satisfy the rigorous requirements for patent protection. It includes all those once protected inventions and works of authorship for which patent or copyright protection has expired or lapsed. It also contains those sounds, shapes, scenes, characters, plots, and other items "out there" which authors, composers, artists, sculptors, and others combine, reshape, mix, alter, adapt, and transform in preparing new works. (33) This kind of borrowing and recombination "is not parasitism: it is the essence of authorship. And, in the absence of a vigorous public domain, much of it would be illegal." (34)

   The public domain is essential to the creative efforts of writers, composers, artists, and all other kinds of authors, (35) and the Supreme Court has held that the public has a constitutional right to copy articles, designs, and other works of authorship and inventions that have entered the public domain. (36) The Court made clear in Sears and Compco that fundamental policy, embodied in the Patent and Copyright Clause, gives the public the right to copy whatever the federal patent and copyright laws leave in the public domain. (37) Implicit in the Clause is the principle that "free exploitation of ideas will be the rule, to which the protection of a federal patent is the exception." (38) The Court later interpreted the Copyright Act and the Copyright Clause in Feist to strike down copyright protection for data while declaring that "originality" is a constitutional requirement even though that term is not in the Copyright Clause. (39) Similarly, in Dastar, the Supreme Court rejected an interpretation of the Lanham Act that resulted in the recapture of a work that had entered the public domain. (40) Trademark law cannot be used as a subterfuge for extending the limited periods of monopoly privilege enjoyed by patent and copyright holders. (41) Congress cannot create a species of perpetual patent or copyright. (42)

   Justice Stevens, dissenting in Eldred, relied on the Supreme Court's decisions in Graham, Sears, and Bonito Boats to underscore the importance of the public domain while arguing that Congress could not extend the copyright term retroactively. (43) He said it was settled that the Copyright Clause was both a grant of power and a limitation, that Congress could not "overreach the restraints imposed by the stated constitutional purpose" of that Clause, (44) and that the reasons for preventing a state from extending the life of a patent beyond its expiration date applied to Congress. (45) If Congress could not extend the life of the patent monopoly, then Congress could not extend the life of a copyright beyond its expiration date. (46) It was noted that the Constitution's requirement that the grants of exclusive rights are for "'limited [t]imes' serves the ultimate purpose of promoting the 'Progress of Science and useful Arts' by guaranteeing that those innovations...