Source: JOLT Digest of Harvard Journal of Law and Technology
“The Supreme Court, in Kirtsaeng v. John Wiley & Sons, Inc., held in a 6-3 decision that the “first sale” doctrine applies to copies of copyrighted work lawfully made abroad, reversing the judgment of the Court of Appeals for the Second Circuit. The case involved the resale in the United States of approximately 600 copies of textbooks that originally had been bought in Thailand at relatively inexpensive prices. On remand, the Supreme Court ordered that the Second Circuit conduct further proceedings consistent with the Court’s opinion.
The unauthorized importation of copyrighted material is barred by § 602 of the Copyright Act of 1976 (17 U.S.C. § 602), and John Wiley & Sons’ (“Wiley”) right to distribute is protected by § 106(3). However, the first sale doctrine of § 109(a) extinguishes the copyright owner’s interest in a particular copy after the first sale to a consumer. At issue in Kirtsaeng was whether § 109(a) applies to goods of “foreign manufacture”—more specifically, whether the phrase “lawfully made under this title” applied to goods like the Asian editions of the Wiley textbooks.”
On January 18, the United States Supreme Court decided an important copyright case, Golan v. Holder, that I’ve been tracking. The Supreme Court upheld a 1994 law [§514 of the Uruguay Round Agreements Act of 1994] granting copyright protection to a large number of foreign works that had been freely available in the public domain. The petitioners who challenged the Act consisted of a group of musicians, publishers and conductors
§514 specifically sought to offer protection to works published abroad which had not previously enjoyed protection in the United States. In doing so, §514 brought back under copyright works which had previously been in the public domain in the United States. The petitioners in Golan argued that in doing so, Congress exceeded the authority granted by the Copyright Clause of the U.S. Constitution, and also infringed on their First Amendment right to free expression. – American Bar Association February 2012 IPL eNews
Held: In a 6-2 decision (Justice Kagan did not participate), the Supreme Court upheld the Tenth Circuit’s ruling that §514 of the Uruguay Round Agreements Act of 1994 did not violate the First Amendment. Further, the high court also ruled that the Copyright Clause of the U.S. Constitution did not prohibit Congress from removing works from the public domain. Justice Breyer, joined by Justice Alito, authored a dissenting opinion.
On October 5, 2011, The United State Supreme Court heard arguments on the questions of whether Congress can restore copyright protection to a work whose copyright protection had previously expired and was therefore in the public domain. This case has substantial and profound implications for copyright law both in the U.S. and abroad so this is definitely a case to watch.
Lyle Denniston’s coverage on the SCOTUS blog is excellent so I won’t rehash it in full here. But in a nutshell, this is a test case that questions Congress’s power to grant copyright protection to certain literary and artistic works prepared by foreign authors that had never existed in the U.S. in order to protect authors and composers worldwide under international treaties. This process is referred to as “restoration” because if granted, the exclusive rights of copyright (to copy, distribute, prepare derivative works and perform/display publicly) would be conferred on works that are now in the public domain. Works in the public domain have no protection and therefore available for use to all. So clearly this has major implications for those currently using these public domain works.
The American Bar Association filed an amicus curiae brief in August supporting Congress’ power to implement U.S. treaty obligations. The brief also states the ABA’s position that Section 514 of the Uruguay Round Agreements Act of 1994 does not violate the Constitution’s copyright clause or the First Amendment:
It is important for the United States to comply with the international treaties that this country has ratified, and to do so in a way that does not encourage other countries to disregard their obligations under those treaties …,” the brief states. “Congress made a judgment that Section 514 was the appropriate way to comply with the Berne Convention and the [Trade Related Aspects of International Property Rights] agreement, and would result in important protections abroad for U.S. authors.
The case involves a two-pronged constitutional challenge to a 1994 law, passed by Congress to implement the global agreement on trade in the so-called “Uruguay Round.” First, the case tests whether the Copyright Clause gives Congress any authority to take a work out of the public domain — that is, to restore its copyright shield once that has expired. Second, it tests whether the 1994 law at issue violates the free speech rights of those who, before the law was passed, freely performed or distributed works that had entered the public domain — such as Prokofiev’s Peter and the Wolf.
So I will watch this case carefully and provide updates as more information becomes available. I’m interested in your thoughts on the issue so please post a comment.