Are All Those Who Author Creative Works Created Equal?
Part Two of a Two-Part Series on How Much Congress Can Constitutionally Revise Copyright Law

This is the second in a two-part series of columns on two cases litigated by the Stanford Center for Internet and Society (CIS) and a related piece for Wired by prominent cyberlaw attorney Jennifer Granick, previously at CIS and now at the Electronic Frontier Foundation (EFF). - Ed.

In Part One of this two-part series of columns, I commented on Kahle v. Gonzales, a decision issued earlier this year by the U.S. Court of Appeals for the Ninth Circuit. There, a three-judge panel rejected CIS's argument that the transition from an opt-in to an opt-out system of copyright violated the Constitution's Copyright Clause and First Amendment.

The shift, to be more specific, was from a system in which an author of a work must take a formal action to protect copyright, to one in which copyright protection is automatic the moment pen leaves paper, or the last character is typed -- requiring the author to take formal action to opt out of copyright protection. I think most people would agree this is a radical change.

Thus, in Part One, I deemed CIS's First Amendment argument quite strong because of the obvious "chilling effect" of an opt-out system that automatically sweeps works into copyright, regardless of their original authors' intentions for their use. However, the Ninth Circuit panel held otherwise, upholding the opt-out system.

In this column, I will consider CIS's victory, just last month, before the U.S. Court of Appeals for the Tenth Circuit in a somewhat parallel case, Golan v. Gonzales, that also raised a copyright-related First Amendment issue

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CIS's Victory In Golan v. Gonzales

In Golan v. Gonzales, CIS sought, and a U.S. District Court granted, further First Amendment scrutiny of a section of the Uruguay Round Agreements Act (URAA).

As the Tenth Circuit panel explained, the URAA implements the U.S.'s obligations under the Berne Convention for the Protection of Literary and Artistic Works. The Convention requires member countries to treat foreign and domestic authors equally with respect to copyright protections.

The Convention's recent application, CIS pointed out, has resulted in reinstating the previously-expired copyright of works that were already in the public domain. The result was to adversely affect a number of parties, including educators, who had built up expectations that they could continue to perform or disseminate what had been public-domain works, free of charge and without permission.

The panel, citing the Supreme Court's decision in Eldred v. Ashcroft (which I discussed at length in Part One) saw no Copyright Clause violation here, but did see a potential First Amendment issue - a significant victory for CIS.

The First Amendment Issue Here: Derivative-Use "Rights" In Previously Public-Domain Works

In isolating a First Amendment issue here, the panel followed the Supreme Court's teaching in Eldred that a First Amendment challenge may be appropriate when laws change the "traditional contours" of copyright in a way that has repercussions for free speech.

Moreover, it held that removing works from the public domain is historically unusual and thus affects copyright law's "traditional contours," as described in Eldred.

More specifically, the Court noted that "ordinarily works in the public domain stay there." In addition, in its consideration of the historical record regarding the early Republic, it saw no "burgeoning tradition" of "removing works from the public domain."

Finally, the panel held that the plaintiffs who sought to perform or disseminate what had previously been public-domain works had a First Amendment-protected interest in doing so. The harm here is obvious: Symphony conductors now cannot play the works they used to play, and movie houses cannot show the movies they used to show - at least, not without gaining permission from, and possibly paying money to, the copyright owners.

But is this harm a "right"? Interestingly, the panel described a work's falling into the public domain as creating a general First Amendment-based right, which anyone can assert, to create derivative works based on the public-domain work. One might style that opportunity, instead, as a privilege or a stroke of luck, rather than a "right." After all, there was no right to derivate uses when the work was copyright-protected; how did the default rule by which a work falls into the public domain create a right?

Granted, there is a reliance interest and a strong fairness argument here. Equitable principles of estoppel might suggest that if a party has invested deeply enough in continuing to use what has been a public-domain work, then the government that allowed the work to move into the public domain should not be allowed later to destroy an investment it once encouraged. (Interestingly, though, investments vary: An orchestra must practice and master a piece of music, whereas a movie house need only show the film.)

Ultimately, however, principles of estoppel rarely apply against the government, since all legislation changes rules and thus expectations.

Still, the First Amendment's concern for "chilling effects" could bring fairness back into the equation: Certainly, investment of time and money into the derivative use of public-domain works will be chilled if there is a risk those works will be taken back out of the public domain.

The Creator/User Question

In Part One, I raised an issue that pervades all these legal clashes: The conflict between the rights of creators and the rights of those who would use their work. Here, it has arisen again. In Golan, the heirs or successor owners of copyrights of original creators may reap royalties if public-domain works are re-privatized - which one could see as a retroactive benefit to the original creators. Yet derivative users and exhibitors find their interests harmed, and their prior investments undermined, when previously public-domain works are re-privatized.

There is no easy solution to this conflict. The Golan court noted a tension within the Copyright Clause, and thus within the Constitution itself: While it is true that "[t]he Clause's primary purpose is to provide authors with incentives to produce works that will benefit the public," it is also true that its "ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good." Moreover, since derivative works, too, sometimes serve the public good, there is a sense in which they too - not just original works - fit within the purposes of the Copyright Clause.

In her Wired piece, Granick finesses the creator/derivative user conflict by claiming CIS's arguments would benefit "the overwhelming majority of creators." But, in my opinion, that's a bit presumptuous.

It's not clear that the overwhelming majority of creators directly benefit from being able to draw upon copyright-expired works; some are creating original works, entitled to their own copyright.

Of course, every creator is influenced by those who preceded him or her. Yet relatively few rely so heavily on the invocation of their influences that they need to actually use copyrighted work in a way that would infringe copyright. Thus, relatively few need the protection of either the fair-use or public-domain rules.

Also, and more fundamentally, it isn't clear that the class of creators who do necessarily draw on copyright-expired works deserves consideration equal to that given to the class of creators of utterly original works that do not depend on exploitation of copyright-expired works.

Indeed, one could see the Copyright Clause as creating an author/derivative-user hierarchy where authors come first - with the right not only to force those who use works without the authors' permission to pay damages, but also the right to get an injunction against use by the derivative user. "Fair use" is a carve-out to copyright, not vice-versa - and that suggests that original creators rights may take precedence over derivative users' rights.

After all, as the Golan court noted, the primary purpose of the Copyright Clause is to protect "authors," traditionally understood as the creators of original work. If we are to see the derivative user as a new kind of author, and equalize the two in the constitutional hierarchy, then we will surely be changing the "traditional contours" of copyright law - not necessarily for the better.

Interestingly, however, some derivative users -actors and orchestras come to mind - are more like authors than others, which complicates the issue considerably. The definitive staging of a play, or an original performance of a symphony -- though not necessarily set down in a "fixed medium," as is required for copyright protection to adhere -- has a level of creativity that may challenge the creator/derivative user hierarchy. The mere exhibition of a film, however, does not.

In sum, CIS is right to continue to invoke the First Amendment in challenging Congress's ability to upset settled expectations about copyright law. Nevertheless, CIS needs to grapple with the reality that derivative users' First Amendment rights may well be lower in the constitutional hierarchy than those of original creators - whose work the Copyright Clause was written to protect, and whom First Amendment doctrine has kept most centrally in mind.

Granted, as derivative users become more influential via YouTube and other media, it's possible that the real-world hierarchy will shift. But should the constitutional hierarchy also shift to keep up with the times? The argument that it should is much more challenging than CIS has yet acknowledged, and involves arguments that are topsy-turvy to those CIS is currently making. Such arguments tend to cut in favor of an assault upon, not a defense of, the traditional contours of copyright law.