12 There was also extensive discussion of the Constitutional implications of extending such retroactive protection. Ultimately Congress decided to postpone its determination to a later date, and made no changes in United States law to implement Article 18. The House Judiciary Committee explained, "[W]e remain persuaded that any solution to the question of retroactivity can be addressed after adherence to Berne when a more thorough examination of commercial consumer considerations is Constitutional, possible."22 and Most recently, the legislation implementing the North American Free Trade Agreement revived some lapsed copyrights, restoring copyright protection to certain Mexican and Canadian motion pictures that fell into the public domain in the United States due to publication without notice at a time when notice was required by U.S. law. 23 While this provision has not yet been challenged, no restored copyrights have yet become enforceable (pending publication of "statements of intent" filed by the copyright owners). Although some prior retroactive copyright legislation has survived without legal challenge, none has gone so far as the bills that are the subject of this hearing. The proposed legislation would restore copyright protection to innumerable works in all categories from around the world, all of which are today in the 22 H.R. Rep. No. 100-609, 100th Cong., 2d Sess. 52 (1988). 13 public domain. And the protection it provides to current users of those public domain works is not absolute. It therefore seems likely that it will be challenged in court on constitutional grounds, whether or not that challenge is ultimately successful. C. Possible Copyright Clause Constraints The Patent and Copyright Clause of the Constitution authorizes Congress "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their Writings and Discoveries."24 The Supreme Court has held that this Clause "is both a grant of power and a limitation The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose."25 The constitutionality of the proposed legislation might be called into question as exceeding Congress's power under the Copyright Clause on three separate grounds: (1) the purpose set forth in the Clause, which gives Congress the power to grant copyrights "to promote the progress of science and useful arts"; (2) the "limited Times" language; or (3) the Supreme Court's interpretation of the Clause in Graham v. John Deere Co., as reflected in the statement that "Congress may not authorize the 24 25 U.S. CONSTITUTION, Art. I, S 8, cl. 8. Graham v. John Deere Co., 383 U.S. 1, 5-6 (1966). See also Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 346-47 (1991) (holding that Clause places limits on subject matter that can be protected as "writings" of "authors"). 14 issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."26 In my opinion, none of the three grounds poses an obstacle to restoration of these copyrights generally. The one potential problem is the proposed treatment of derivative works based on restored works. patents, not to As to the Supreme Court's famous statement in Graham v. John Deere, on its face it applies only to copyrights.27 Nor should it be read more broadly, to suggest that Congress cannot grant copyrights to works already in the public domain. Graham does not confer inviolable status on the public domain in all circumstances and for all purposes. When read in the context of the entire opinion, the basis for the quoted statement is clear: if an invention is already available to the public, by definition it is not novel, and therefore the fundamental standard for patent protection is not met. The work is not innovative, and does not "add to the sum of useful knowledge," therefore meriting the strong monopoly of a patent. Restoring copyright to a work that is in the public domain for failure to comply with formalities 27 Indeed, the Court specifically identified the copyright provision of the constitutional clause as "not relevant here." Id. at 5, n. 1. See also Mitchell Bros. Film Group v. Cinema Adult Theater, 604 F.2d 852, 860 (5th Cir. 1979), cert. denied, 445 U.S. 917 (1980) (differentiating between application of Patent and Copyright Clause in the context of patents and the context of copyrights). 15 or lack of national eligibility, in contrast, does not call into question the satisfaction of the fundamental standard for copyright protection. The work contains no less original authorship than it did at its creation. Moreover, the Court's expressed concern, the removal of existing knowledge from the public domain, would not be implicated by the restoration of a copyright. Since facts and ideas are not protected by copyright, 28 the knowledge contained in a restored work will remain freely available to the public. It is worth noting that even in the context of patents, Congress has not treated the public domain as entirely inviolable. For example, the Patent Act provides that inventors who have lost their patents through the failure to file timely maintenance fees may in some circumstances have the patents restored. 29 When this occurs, the investments of intervening users are protected by allowing them to continue their use to a certain extent.30 This 28 See 17 U.S.C. § 102(b) (1978); Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 344-45 (1991); Harper & Row, Publishers, v. Nation Enterprises, 471 U.S. 539, 556 (1985). 29 35 U.S.C. S 41 (c) (1). 30 See id. S 41 (c) (2): "No patent, the term of which has been maintained as a result of the acceptance of a payment of a maintenance fee under this subsection, shall abridge or affect the right of any person or his successors in business who made, purchased or used after the six-month grace period but prior to the acceptance of a maintenance fee under this subsection anything protected by the patent, to continue the use of, or to sell to others to be used or sold, the specific thing so made, purchased or used. The court before which such matter is in question may provide for the continued manufacture, use or sale of the thing made, purchased, or used as specified, or for the manufacture, use or sale of which substantial preparation was made after the sixmonth grace period but before the acceptance of a maintenance fee 16 provision supports an interpretation of Graham v. John Deere as being concerned with the policy of novelty rather than the preservation of the public domain as such. Congress can only grant copyrights "for limited Times." It might be argued that once a work has fallen into the public domain, its "time" has expired and its copyright cannot constitutionally be restored. But this interpretation seems unwarranted as a matter of both the Constitutional language and its underlying policy. The phrase "for limited Times" embodies a concern that federal copyright protection not endure forever, but give authors protection for a reasonable period of time only, with all works eventually entering the public domain. 31 Accordingly, the ultimate duration of the copyright must be limited. This does not mean, however, that there can be no interruption of protection during that time period. under this subsection, and it may also provide for the continued practice of any process practiced, or for the practice of which substantial preparation was made, after the six-month grace period but prior to the acceptance of a maintenance fee under this subsection, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced after the six-month grace period but before the acceptance of a maintenance fee under the subsection." 31 See Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975) ("The limited scope of the copyright holder's statutory monopoly, like the limited copyright duration required by the Constitution, reflects a balance of competing claims upon the public interest: Creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts."). |