Eldred v. Reno
239 F.3d 372
February 16, 2001

Opinion of the Court

 (See Judge Sentelle Dissent)
(See Rehearing Denied)
(See Cert. Granted)

I. Background
II. Analysis 
A. First Amendment 
1. Standing 
2. The merits 
        B. Requirement of Originality 
        C. The Limitation of "limited Times" 
III. The Dissent 
IV. Conclusion: 

Eric ELDRED, et al., Appellants,


Janet RENO,
In her official capacity as Attorney General, Appellee

Docket No. 99-5430
Argued Oct. 5, 2000.
Decided Feb. 16, 2001

Appeal from the U.S. District Court for the District of Columbia, Green, J. 

Before Ginsburg, Sentelle, and Henderson, circuit judges. 

Ginsburg, J. 

        The plaintiffs in this case, corporations, associations, and individuals who rely for their vocations or avocations upon works in the public domain, challenge the constitutionality of the Copyright Term Extension Act of 1998 (CTEA), Pub. L. No. 105-298, 112 Stat. 2827. This marks the first occasion for an appellate court to address whether the First Amendment or the Copyright Clause of the Constitution of the United States constrains the Congress from extending for a period of years the duration of copyrights , both those already extant and those yet to come. We hold that neither does. 

I. Background

        The CTEA amends various provisions of the Copyright Act of 1976, 17 U.S.C. 101 et seq. The portions of the CTEA at issue here extend the terms of all copyrights for 20 years as follows: (1) For a work created in 1978 or later, to which an individual author holds the copyright, the Act extends the term to the life of the author plus 70 years. See Pub L. No. 105-298 102(b)(1), 112 Stat. 2827; 17 U.S.C. 302(a). (2) For a work created in 1978 or later that is anonymous, or pseudonymous, or is made for hire, the term is extended from 75 to 95 years from the year of publication or from 100 to 120 years from the year of creation, whichever occurs first. See Pub. L. No. 105-298 102(b)(3), 112 Stat. 2827; 17 U.S.C. 302(c). (3) For a work created before 1978, for which the initial term of copyright was 28 years, the renewal term is extended from 47 to 67 years, thereby creating a combined term of 95 years. See Pub. L. No. 105-298 102(d), 112 Stat. 2827; 17 U.S.C. 304. In all three situations, therefore, the CTEA applies retrospectively in the sense that it extends the terms of subsisting copyrights. As a result, the CTEA better aligns the terms of United States copyrights with those of copyrights governed by the European Union. See S. Rep. No. 104-315, at 7-8 (1996); Council Directive 93/98, art. 7, 1993 O.J. (L 290) 9.

        The CTEA is but the latest in a series of congressional extensions of the copyright term, each of which has been made applicable both prospectively and retrospectively. In 1790 the First Congress provided, both for works "already printed" and for those that would be "[t]hereafter made and composed," initial and renewal terms of 14 years, for a combined term of 28 years. Act of May 31, 1790 1, 1 Stat. 124, 124. In 1831 the Congress extended the initial term to 28 years, thereby creating a combined term of 42 years. See Act of Feb. 3, 1831 1, 4 Stat. 436, 436. So the term remained until 1909, when the Congress extended the renewal term as well to 28 years, making for a combined term of 56 years. See Act of March 4, 1909 23, 35 Stat. 1075, 1080.

        Between 1962 and 1974 the Congress passed a series of laws that incrementally extended subsisting copyrights. See Pub. L. No. 87-668, 76 Stat. 555 (1962); Pub. L. No. 89-142, 79 Stat. 581 (1965); Pub. L. No. 90-141, 81 Stat. 464 (1967); Pub. L. No. 90-416, 82 Stat. 397 (1968); Pub. L. No. 91-147, 83 Stat. 360 (1969); Pub. L. No. 91-555, 84 Stat. 1441 (1970); Pub. L. No. 92-170, 85 Stat. 490 (1971); Pub. L. No. 92-566, 86 Stat. 1181 (1972); Pub. L. No. 93-573, title I, 104, 88 Stat. 1873 (1974). In 1976 the Congress altered the way the term of a copyright is computed so as to conform with the Berne Convention and with international practice. See H.R. Rep. No. 94-1476, at 135 (1976). Thenceforth the term would be the life of the author plus 50 years or, where there was no identifiable author, the earlier of 75 years from the year of publication or 100 years from the year of creation. See Pub. L. No. 94-553 302-05, 90 Stat. 2541, 2572- 76 (1976).  The CTEA amends this scheme by adding 20 years to the term of every copyright.

        The plaintiffs filed this suit against the Attorney General of the United States to obtain a declaration that the CTEA is unconstitutional. Among the plaintiffs are a non-profit association that distributes over the internet free electronic versions of books in the public domain; a company that reprints rare, out-of-print books that have entered the public domain; a vendor of sheet music and a choir director, who respectively sell and purchase music that is relatively inexpensive because it is in the public domain; and a company that preserves and restores old films and insofar as such works are not in the public domain, needs permission from their copyright holders -- who are often hard to find -- in order to exploit them.

        The district court entered judgment on the pleadings in favor of the Government and dismissed the plaintiffs' case in its entirety. On appeal, the plaintiffs renew their claims that the CTEA both violates the First Amendment to the Constitution and is in various ways inconsistent with the Copyright Clause of Article I, 8 of the Constitution, which authorizes the Congress: "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." 

II. Analysis

        The plaintiffs claim that the CTEA is beyond the power of the Congress and therefore unconstitutional for three reasons: first, the CTEA, in both its prospective and retrospective applications, fails the intermediate scrutiny appropriate under the First Amendment; second, in its application to preexisting works, the CTEA violates the originality requirement of the Copyright Clause; and third, in extending the term of subsisting copyrights, the CTEA violates the "limited Times" requirement of the Copyright Clause -- a requirement that they say is informed by the goal of "promot[ing] the Progress of Science and useful Arts." Because each of these grounds presents a pure question of law, we consider them de novo. See, e.g., United States v. Popa, 187 F.3d 672, 674 (D.C. Cir. 1999). 

    A. First Amendment

        The First Amendment aspect of the plaintiffs' complaint attacks the CTEA not only in its application to subsisting copyrights but also insofar as it extends the terms of copyrights for works yet to be created. The Government questions plaintiffs' standing to complain in the latter regard. 

                1. Standing

        Consider first the plaintiffs' standing with respect to works that, though now subject to subsisting copyrights, will in due course enter the public domain: The plaintiffs benefit from using works in the public domain and, but for the CTEA, they would be able to exploit additional works the copyrights to which would have expired in the near future. As such, they suffer an injury in fact that is traceable to the CTEA and that we could redress by holding the Act invalid. See Lujan v. Defenders of Wildlife, 504 U.S. 555, 560-61 (1992). The Government concedes as much.

         In view of the plaintiffs' standing to challenge the CTEA with respect to works already copyrighted, the Government's objection to the plaintiffs' standing with respect to works yet to be created seems very weak indeed. The plaintiffs benefit from works in the public domain and are deprived of that benefit so long as such works are under copyright. That is as true for works not yet created as for extant works on which the copyrights are about to expire; the Government does not draw any meaningful distinction between the two categories of works. We conclude therefore that the plaintiffs have standing to pursue their prospective claim under the First Amendment. 

                2. The merits

        The decisions of the Supreme Court in Harper & Row Publishers Inc. v. Nation Enters., 471 U.S. 539 [ 225 USPQ 1073] (1985), and of this court in United Video, Inc. v. FCC, 890 F.2d 1173 [ 12 USPQ2d 1964] (1989), stand as insuperable bars to plaintiffs' first amendment theory. In Harper & Row the Court held that a magazine's advance publication of excerpts from the memoirs of former President Gerald Ford infringed the copyright thereon. 471 U.S. at 569. In doing so the Court explained how the regime of copyright itself respects and adequately safeguards the freedom of speech protected by the First Amendment.

471 U.S. at 556(citation omitted). The first amendment objection of the magazine was misplaced "in view of the First Amendment protections already embodied in the Copyright Act's distinction between copyrightable expression and uncopyrightable facts and ideas, and the latitude for scholarship and comment traditionally afforded by fair use." Id. at 560.

        In keeping with this approach, we held in United Video that copyrights are categorically immune from challenges under the First Amendment. There, certain cable companies petitioned for review of an FCC regulation providing that the supplier of a syndicated television program could agree to the program being broadcast exclusively by a single station in a local broadcast area. 890 F.2d at 1176-78. We rejected the first amendment aspect of their challenge as follows:

890 F.2d at 1191.

        The plaintiffs argue that "these authorities are restricted solely to the narrow case where a litigant demands a right to use otherwise legitimately copyrighted material," which case is "plainly distinct from [this] First Amendment challenge[ ] to the constitutionality of the statute granting a [copy]right in the first instance." We think the plaintiffs' purported distinction is wholly illusory. The relevant question under the First Amendment -- regardless whether it arises as a defense in a suit for copyright infringement or in an anticipatory challenge to a statute or regulation -- is whether the party has a first amendment interest in a copyrighted work. The works to which the CTEA applies, and in which plaintiffs claim a first amendment interest, are by definition under copyright; that puts the works on the latter half of the "idea/statement dichotomy" and makes them subject to fair use. This obviates further inquiry under the First Amendment.

        The plaintiffs cite no case to the contrary. In two of the cases they do cite, Reno v. ACLU, 521 U.S. 844, 871-79 (1997), and Simon & Schuster, Inc. v. Members of NY State Crime Victims Bd., 502 U.S. 105, 115-23 (1991), the Supreme Court held statutes unconstitutional under the First Amendment because they were unjustifiably content based; the plaintiffs here do not claim that the CTEA is anything but content neutral. In San Francisco Arts & Athletics, Inc. v. United States Olympic Committee, also cited by the plaintiffs, the Court did indeed apply heightened scrutiny under the First Amendment to a statute granting the United States Olympic Committee trademark-like protection for the word "Olympic." 483 U.S. 522, 535-41 [3 USPQ2d 1145] (1987). Restricting the use of particular words "runs a substantial risk of suppressing ideas in the process ," the Court explained. Id. at 532. As we have seen, however, copyright protection cannot embrace ideas; it therefore does not raise the same concern under the First Amendment. Finally, although the plaintiffs assert that the Second Circuit has reached the merits of a first amendment challenge to an aspect of the Copyright Act of 1976, in fact that court, after reviewing the case law, concluded that the plaintiffs categorically lacked "any right to distribute and receive material that bears protection of the Copyright Act." Authors League of America v. Oman, 790 F.2d 220, 223 [ 229 USPQ 724] (1986).

        As this is all the support plaintiffs muster for their proposition, we need not linger further in disposing of it. Suffice it to say we reject their first amendment objection to the CTEA because the plaintiffs lack any cognizable first amendment right to exploit the copyrighted works of others. 

        B. Requirement of Originality

        The plaintiffs' second challenge ostensibly rests upon Feist Publications, Inc. v. Rural Telephone Service Co., in which the Supreme Court held that telephone listings compiled in a white pages directory are uncopyrightable facts: "The sine qua non of copyright is originality." 499 U.S. 340, 345 [18 USPQ2d 1275] (1991). "Originality is a constitutional requirement" for copyright because the terms "Authors" and "Writings," as they appear in the Copyright Clause, "presuppose a degree of originality." Id. at 346.

        The plaintiffs reason from this that the CTEA cannot extend an extant copyright because the copyrighted work already exists and therefore lacks originality. Not so. Originality is what made the work copyrightable in the first place. A work with a subsisting copyright has already satisfied the requirement of originality and need not do so anew for its copyright to persist. If the Congress could not extend a subsisting copyright for want of originality, it is hard to see how it could provide for a copyright to be renewed at the expiration of its initial term a practice dating back to 1790 and not questioned even by the plaintiffs today.

        The plaintiffs' underlying point seems to be that there is something special about extending a copyright beyond the combined initial and renewal terms for which it was initially slated. Nothing in Feist or in the requirement of originality supports this, however: All they tell us is that facts, like ideas, are outside the ambit of copyright. Undaunted in trying to advance their novel notion of originality, the plaintiffs point to cases that do not address the requirement of originality for copyright per se. They point to no case or commentary, however, that calls into question the distinction between a new grant of copyright -- as to which originality is an issue -- and the extension of an existing grant. That distinction reflects, at bottom, the difference between the constitutionally delimited subject matter of copyright and the Congress's exercise of its copyright authority with respect to that subject matter.

        The plaintiffs do point out that the Supreme Court has said the "Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available." Graham v. John Deere Co., 383 U.S. 1, 6 [ 148 USPQ 459] (1966). The Court similarly stated, over a century ago, that the issuance of a trademark could not be justified under the Copyright Clause because the subject matter of trademark is "the adoption of something already in existence." Trademark Cases, 100 U.S. 82, 94 (1879). Applied mutatis mutandis to the subject of copyright, these teachings would indeed preclude the Congress from authorizing under that Clause a copyright to a work already in the public domain.

        The plaintiffs read the Court's guidance more broadly, in the light of Feist, to mean that a work in the public domain lacks the originality required to qualify for a copyright. That is certainly not inconsistent with the Court's opinion: A work in the public domain is, by definition, without a copyright; where the grant of a copyright is at issue, so too is the work's eligibility for copyright, and thus the requirement of originality comes into play. We need not adopt a particular view on that point, however, as it has nothing to do with this case. Here we ask not whether any work is copyrightable -- indeed, the relevant works are already copyrighted but only whether a copyright may by statute be continued in force beyond the renewal term specified by law when the copyright was first granted. For the plaintiffs to prevail, therefore, they will need something other than the requirement of originality upon which to make their stand. 

        C. The Limitation of "limited Times"

        We come now to the plaintiffs' contention that the CTEA violates the constitutional requirement that copyrights endure only for "limited Times." This claim at last speaks to the duration rather than to the subject matter of a copyright: If the Congress were to make copyright protection permanent, then it surely would exceed the power conferred upon it by the Copyright Clause.

        The present plaintiffs want a limit well short of the rule against perpetuities, of course. And they claim to have found it -- or at least a bar to extending the life of a subsisting copyright -- in the preamble of the Copyright Clause: "The Congress shall have power . . . To promote the Progress of Science and useful Arts . . ." Their idea is that the phrase "limited Times" should be interpreted not literally but rather as reaching only as far as is justified by the preambular statement of purpose: If 50 years are enough to "promote . . . Progress," then a grant of 70 years is unconstitutional. Here the plaintiffs run squarely up against our holding in Schnapper v. Foley, 667F. 2d 102, 112 [ 212 USPQ 235] (1981), in which we rejected the argument "that the introductory language of the Copyright Clause constitutes a limit on congressional power." The plaintiffs, however, disclaim any purpose to question the holding of Schnapper; indeed, they expressly acknowledge "that the preamble of the Copyright Clause is not a substantive limit on Congress' legislative power." Their argument is simply that "the Supreme Court has interpreted the terms 'Authors' and 'Writings' in light of that preamble, and that this Court should do the same with 'limited Times."'

        The problems with this argument are manifest. First, one cannot concede that the preamble "is not a substantive limit" and yet maintain that it limits the permissible duration of a copyright more strictly than does the textual requirement that it be for a "limited Time." Second, although the plaintiffs claim that Feist supports using the preamble to interpret the rest of the Clause, the Court in Feist never so much as mentions the preamble, let alone suggests that the preamble informs its interpretation of the substantive grant of power to the Congress (which there turned upon the meaning of "Authors" and of "Writings," each standing alone). 499 U.S. at 345-47. Similarly, the Trade-Mark Cases cited in Feist rest upon the originality implied by "invention [and] discovery" and by the "writings of authors," and make no reference at all to the preamble. 100 U.S. at 93-94. 

III. The Dissent

        The foregoing suffices to dispose of plaintiffs' arguments -- as Judge Sentelle, dissenting, implicitly recognizes -- and hence to resolve this case. Our dissenting colleague nonetheless adopts the narrow view of Schnapper urged by an amicus, although that argument is rejected by the actual parties to this case and therefore is not properly before us. See, e.g, 16A Charles Alan Wright et al., Federal Practice and Procedure 3975.1 & n.3 (3d ed. 1999); Resident Council of Allen Parkway Vill. v. HUD, 980 F.2d 1043, 1049 (5th Cir. 1993) (amicus constrained "by the rule that [it] generally cannot expand the scope of an appeal to implicate issues that have not been presented by the parties to the appeal"); cf. Lamprecht v. FCC, 958 F.2d 382, 389 (D.C. Cir. 1992) (intervenor as nonparty "cannot expand the proceedings" or "enlarge those issues presented"). This is particularly inappropriate because a court should avoid, not seek out, a constitutional issue the resolution of which is not essential to the disposition of the case before it. Moreover, because the plaintiffs conspicuously failed to adopt the argument of the amicus, the Government was not alerted to any need to argue this point and did not do so. See Harmon v. Thornburgh, 878 F.2d 484, 494 (D.C. Cir. 1989) (court must "avoid unnecessary or premature constitutional rulings" and this concern "is heightened by the absence of meaningful argument by the parties on [constitutional] question"); Ashwander v. Tennessee Valley Authority, 297 U.S. 288, 346 (1936) (Brandeis, J., concurring) ("Court will not 'anticipate a question of constitutional law in advance of the necessity of deciding it"').

        Even were we to proceed as urged by the amicus and the dissent, however, we would only review the CTEA as we would any other exercise of a power enumerated in Article I. That is we would ask, following McCulloch v. Maryland, 17 U.S. 316, 421 (1819), whether the CTEA is a "necessary and proper" exercise of the power conferred upon the Congress by the Copyright Clause; assuming Judge Sentelle is correct and Schnapper is wrong about the relationship of the preamble to the rest of that Clause, this would require that the CTEA be an "appropriate" means, and "plainly adapted" to the end prescribed in the preamble, "promot[ing] Progress of Science and useful Arts." The Congress found that extending the duration of copyrights on existing works would, among other things, give copyright holders an incentive to preserve older works, particularly motion pictures in need of restoration. See S. Rep. No. 104-315, at 12 (1996). If called upon to do so, therefore, we might well hold that the application of the CTEA to subsisting copyrights is "plainly adapted" and "appropriate" to "promot[ing] progress." See Ladd v. Law & Technology Press, 762 F.2d 809, 812 [ 226 USPQ 774] (9th Cir. 1985) (upholding the deposit requirement of the Copyright Act of 1976 as "necessary and proper" because the purpose was "to enforce contributions of desirable books to the Library of Congress").

        Judge Sentelle concludes otherwise only because he sees a categorial distinction between extending the term of a subsisting copyright and extending that of a prospective copyright. This distinction is not to be found in the Constitution itself, however. The dissent identifies nothing in text or in history that suggests that a term of years for a copyright is not a "limited Time" if it may later be extended for another "limited Time." Instead, the dissent suggests that the Congress -- or rather, many successive Congresses -- might in effect confer a perpetual copyright by stringing together an unlimited number of "limited Times," although that clearly is not the situation before us. The temporal thrust of the CTEA is a good deal more modest: The Act matches United States copyrights to the terms of copyrights granted by the European Union, see Council Directive 93/98, art. 7, 1993 O.J. (L 290) 9; in an era of multinational publishers and instantaneous electronic transmission, harmonization in this regard has obvious practical benefits for the exploitation of copyrights. This is a powerful indication that the CTEA is a "necessary and proper" measure to meet contemporary circumstances rather than a step on the way to making copyrights perpetual; the force of that evidence is hardly diminished because, as the dissent correctly points out, the EU is not bound by the Copyright Clause of our Constitution . As for the dissent's objection that extending a subsisting copyright does nothing to "promote Progress," we think that implies a rather crabbed view of progress: Preserving access to works that would otherwise disappear not enter the public domain but disappear -- "promotes Progress" as surely as does stimulating the creation of new works.

        The position of our dissenting colleague is made all the more difficult because the First Congress made the Copyright Act of 1790 applicable to subsisting copyrights arising under the copyright laws of the several states. See Act of May 31, 1790, 1 and 3, 1 Stat. 124-25. [FN *] The construction of the Constitution "by [those] contemporary with its formation, many of whom were members of the convention which framed it, is of itself entitled to very great weight, and when it is remembered that the rights thus established have not been disputed [for this long], it is almost conclusive." Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 57 (1884). The plaintiffs, recognizing the import of this "almost conclusive" point for their own theory, try to avoid it with the suggestion that application of the Act of 1790 to subsisting copyrights "is fully understandable under a Supremacy Clause analysis" in that it "clarif[ied] which law (state or federal) would govern th[o]se copyrights." But that will not do: A federal law is not valid, let alone supreme, if it is not first an exercise of an enumerated power. And the First Congress was clearly secure in its power under the Copyright Clause to extend the terms of subsisting copyrights beyond those granted by the States.

        Such guidance as the Supreme Court has given further confirms us in this view of the matter. The Court has made plain that the same Clause permits the Congress to amplify the terms of an existing patent. As early as 1843 it established that the status of a particular invention and its protections

McClurg v. Kingsland, 42 U.S. 202, 206.

        Within the realm of copyright, the Court has to the present era been similarly deferential to the judgment of the Congress. "As the text of the Constitution makes plain, it is Congress that has been assigned the task of defining the scope of the limited monopoly that should be granted to authors or to inventors in order to give the appropriate public access to their work product;" that "task involves a difficult balance between [competing interests]" as reflected in the frequent modifications of the relevant statutes. Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 429 [ 220 USPQ 665] (1984). And still more recently: "Th[e] evolution of the duration of copyright protection tellingly illustrates the difficulties Congress faces [in exercising its copyright power] . . . [I]t is not our role to alter the delicate balance Congress has labored to achieve." Stewart v. Abend, 495 U.S. 207, 230 [ 14 USPQ2d 1614] (1990). 

IV. Conclusion:

        In sum, we hold that the CTEA is a proper exercise of the Congress's power under the Copyright Clause. The plaintiffs' first amendment objection fails because they have no cognizable first amendment interest in the copyrighted works of others. Their objection that extending the term of a subsisting copyright violates the requirement of originality misses the mark because originality is by its nature a threshold inquiry relevant to copyrightability, not a continuing concern relevant to the authority of the Congress to extend the term of a copyright.

    Whatever wisdom or folly the plaintiffs may see in the particular "limited Times" for which the Congress has set the duration of copyrights, that decision is subject to judicial review only for rationality . This is no less true when the Congress modifies the term of an existing copyright than when it sets the term initially, and the plaintiffs -- as opposed to one of the amici -- do not dispute that the CTEA satisfies this standard of review. The question whether the preamble of the Copyright Clause bars the extension of subsisting copyrights -- a question to which the analysis in Schnapper seems to require a negative answer -- may be revisited only by the court sitting en banc in a future case in which a party to the litigation argues the point.

For the foregoing reasons, the decision of the district court is


FN*. Indeed, each of the four later Congresses that extended the terms of copyrights followed suit in doing so for subsisting as well as prospective copyrights. See Act of Feb. 3, 1831 1, 4 Stat. 436-39; Act of March 4, 1909 23, 35 Stat. 1075-88; Pub. L. No. 94-553 301, 90 Stat. 2541- 2602 (1976); Pub. L. No. 105-298, 112 Stat. 2827 (2000).

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