Golan v. Gonzalez: the Stalemate Between the First Amendment and Copyright Continues

• Publication year: 2007

Daniel Choi⁰

In the wake of a long history of copyright decisions that have been sparse in terms of First Amendment analysis, the Tenth Circuit in Golan v. Gonzales clearly addresses the First Amendment. This Recent Development analyzes the decision in Golan and argues that while the First Amendment concerns were properly recognized, the ultimate resolution of the Tenth Circuit was incorrect. The remand to the district court solely on the issue of whether the Uruguay Round Agreements Act is a content-based or content-neutral restriction of free speech leaves the district court with too narrow of a test for the First Amendment issue in Golan. This Recent Development presents an alternative solution to the issue presented in Golan and discusses the relevant factors to be considered upon remand to the district court.

I. Introduction

Project Gutenberg¹ is an online repository of books currently containing over 100,000 books that can be downloaded at no charge.² Since books on Project Gutenberg are in an electronic format ("eBooks"), dozens of classics such as Pride and Prejudice by Jane Austen, The Raven by Edgar Allen Poe, and The Adventures of Sherlock Holmes by Sir Arthur Conan Doyle can be easily downloaded.³ Though it might seem silly to provide books in an electronic format, considering that reading a book on a computer screen is hardly as comfortable as curling up on a couch, improved technologies, such as personal digital assistants ("PDAs"), have created the ability to read them anywhere, just like a paperback book.

Project Gutenberg succeeds partly because many of the works are part of the public domain and, therefore, have no copyright restrictions.⁴ Often, copyrights can strictly limit the way a work can be used, such as preventing the user from downloading the work onto a PDA or other device for reading. For example, Adobe eBook Reader, a computer program that can display eBooks, stores the user's library of eBooks on his or her computer.⁵ While Adobe eBook Reader currently does not have the functionality to move eBooks onto a PDA,⁶ once the functionality is added, the program and the licensing scheme could work together to strictly limit the use of the eBooks stored in the program, possibly preventing transfers of eBooks to a PDA.⁷ This limitation does not exist with eBooks obtained from Project Gutenberg.

Another benefit of Project Gutenberg is its cost. Downloading and reading eBooks from Project Gutenberg is completely free. Curious readers can explore books from an author or genre that they may not have read had they been forced to pay. In contrast to situations where cost may be prohibitive, Project Gutenberg's selection of free books allows readers to be adventurous and read books they know nothing about, perhaps based on little more than a whim. Further, free and equal access to knowledge contained in eBooks can empower individuals who simply cannot afford to purchase books.

Other similar projects that make extensive use of works in the public domain have met mixed success. LibriVox, for example, is a successful online effort to create audio versions of all the books in the public domain.⁸ The International Music Score Library Project ("IMSLP") attempted to collect musical scores of works in the public domain until it was stopped under threat of a lawsuit.⁹ Created by a Canadian student, known as Feldmahler, in his spare time, IMSLP was the largest collection of public domain musical scores in the world.¹⁰ A problem, however, arose with IMSLP due to the difference in copyright term lengths in different countries. In particular, Austria's copyright terms are twenty years longer than Canada's; therefore, some of the works which had become part of the public domain in Canada were still protected under Austrian copyright.¹¹ As the musical scores were made available over the Internet to worldwide users, IMSLP arguably violated the rights of the Austrian copyright owners.¹² Universal Edition of Austria, owners of some of the relevant copyrights, sent Feldmahler a cease and desist letter that led to his decision to remove the works from his website. He lamented the end to this project, stating:

On Saturday October 13, 2007, I received a second Cease and Desist letter from Universal Edition . . . . [After lengthy discussions with very knowledgeable lawyers and supporters, I became painfully aware of the fact that I, a normal college student, has [sic] neither the energy nor the money necessary to deal with this issue in any other way than to agree with the cease and desist, and take down the entire site. I cannot apologize enough to all IMSLP contributors, who have done so much for IMSLP in the last two years.¹³

In a fraction of the time that it took to build the collection, the threat of a lawsuit shut down one of the greatest repositories of musical works available in the world.

Lawrence Golan, a teacher and performer of foreign musical works,¹⁴ also ran afoul of the copyright laws in a similar situation. Some of the more recognizable composers among the musical works that Golan performs include Sergei Prokofiev, Dmitri Shostakovich, and Igor Stravinsky.¹⁵ Golan relied upon, and believed, that the works should be in the public domain, and he was partly correct.¹⁶ In the United States, they would have been in the public domain.¹⁷ However, because Congress passed section 514of the Uruguay Round Agreements Act¹⁸ ("URAA"), the works were figuratively lifted out of the public domain and had their copyrights in the United States restored. For Golan and others similarly situated, the restoration of the copyrights meant that certain works could not be performed without paying a licensing fee. Often, the fee was high enough to be prohibitive of their musical expression.¹⁹

The Tenth Circuit Court of Appeals heard the case resulting from Golan's story.²⁰ The court recognized a conflict between the copyrights in question and Golan's right to free speech.²¹ Though not always obvious, "[c]opyright law restricts speech."²² It can control creative expression and does so regularly—"[i]t restricts what writers may write, what painters may paint, what musicians may compose."²³ Therefore, anytime copyright law is used to prevent someone from expressing himself or herself in a particular way, that person should ask whether his or her constitutional right to freedom of speech has been inappropriately restrained.

The court decided that there was a valid free speech issue and remanded the case to the district court to decide whether the restraint on free speech, in this case the URAA, was a content-based restriction or a content-neutral restriction in order to determine the appropriate level of scrutiny.²⁴ This Recent Development discusses the soundness of the court's decision to remand the case in Golan v. Gonzales, and argues that the standard provided for the lower court to resolve the issue was not the appropriate standard. Part II of this Recent Development provides an overview of the relevant cases leading up to Golan. Part III discusses the positive aspects of the Golan decision. Part IV critiques the resolution of the issue by the Golan court and proposes a different method to resolve the matter. Finally, Part V highlights some concerns that may surface upon remand.

II. Background

A. Genesis of Copyright

Copyright law has been around for hundreds of years.²⁵ Long before copyright law developed, however, the public domain has existed. If a work is in the public domain, anyone may freely use the work in any way without asking permission.²⁶ Typically, what causes a work protected by copyright to move into the public domain is a passage of time sufficient for the copyright term to expire.²⁷ Under the current United States copyright scheme, copyrights usually expire seventy years after the author's death.²⁸ While the switch from a work that is copyrighted to one in the public domain should be painless, it is often met with resistance. For example, when the public domain was first officially created after 1774 in England, the copyright owners and the public disagreed as to whether the creation of the public domain was appropriate.²⁹ The public favored the public domain because "[f]or the first time in Anglo-American History, the legal control over creative works expired, and the greatest works in English history— including those of Shakespeare, Bacon, Milton, Johnson, and Bunyan—were free of legal restraint."³⁰ On the other hand, the content owners opposed the creation of the public domain because it wiped out the value of their previously copyrighted content.³¹ A recount of the event stated, "By the above decision . . . near 200,000 pounds worth of what was honestly purchased at public sale, and which was yesterday thought property is now reduced to nothing."³² Despite the protests of copyright holders regarding limited copyright terms and the entrance of works into the public domain, the copyright system that has evolved protects creative expression for "limited Times" and upon expiration of the copyright, moves the work into the public domain.³³

B. Eldred

In 2003, Eldred v. Ashcroft³⁴ asked whether Congress had the power to extend the term of copyrights under the Copyright Term Extension Act ("CTEA") for an additional twenty years.³⁵ In addition to extending the term for newly created works, the CTEA retroactively extended the term for works that had already received copyright protection.³⁶ The authority arguably came from the Constitution's Progress Clause which states, "Congress shall have Power . . . [t]o promote the Progress of Science . . . by securing [to Authors] for limited Times . . . the exclusive Right to their . . . Writings . . . ."³⁷ At issue in the case was the phrase "limited Times," which Eldred argued was not being obeyed by Congress's multiple extensions of copyright terms.³⁸ The Supreme Court reasoned that, technically, even a copyright term for the life of the author plus seventy years is...