2003 WL 118221 (U.S.)

ERIC ELDRED, et al., PETITIONERS

v.

JOHN D. ASHCROFT, ATTORNEY GENERAL

No. 01-618

United States Supreme Court.

Argued October 9, 2002

Decided January 15, 2003

I

        The authority to issue copyrights stems from the same Clause in the Constitution that created the patent power. It provides: 'Congress shall have Power ... 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.' Art. I, §8, cl. 8.
        It is well settled that the Clause is 'both a grant of power and a limitation' and that Congress 'may not overreach the restraints imposed by the stated constitutional purpose.' Graham v. John Deere Co. of Kansas City, 383 U. S. 1, 5-6 (1966). As we have made clear in the patent context, that purpose has two dimensions. Most obviously the grant of exclusive rights to their respective writings and discoveries is intended to encourage the creativity of 'Authors and Inventors.' But the requirement that those exclusive grants be for 'limited Times' serves the ultimate purpose of promoting the 'Progress of Science and useful Arts' by guaranteeing that those innovations will enter the public domain as soon as the period of exclusivity expires:

II

        We have recognized that these twin purposes of encouraging new works and adding to the public domain apply to copyrights as well as patents. Thus, with regard to copyrights on motion pictures, we have clearly identified the overriding interest in the 'release to the public of the products of [the author's] creative genius.' United States v. Paramount Pictures, Inc., 334 U. S. 131, 158 (1948).[FN4] And, as with patents, we have emphasized that the overriding purpose of providing a reward for authors' creative activity is to motivate that activity and 'to allow the public access to the products of their genius after the limited period of exclusive control has expired.' Sony Corp. of America v. Universal City Studios, Inc., 464 U. S. 417, 429 (1984). Ex post facto extensions of copyrights result in a gratuitous transfer of wealth from the public to authors, publishers, and their successors in interest. Such retroactive extensions do not even arguably serve either of the purposes of the Copyright/Patent Clause. The reasons why such extensions of the patent monopoly are unconstitutional apply to copyrights as well.
        Respondent, however, advances four arguments in support of the constitutionality of such retroactive extensions: (1) the first Copyright Act enacted shortly after the Constitution was ratified applied to works that had already been produced; (2) later Congresses have repeatedly authorized extensions of copyrights and patents; (3) such extensions promote the useful arts by giving copyright holders an incentive to preserve and restore certain valuable motion pictures; and (4) as a matter of equity, whenever Congress provides a longer term as an incentive to the creation of new works by authors, it should provide an equivalent reward to the owners of all unexpired copyrights. None of these arguments is persuasive.

III

        Congress first enacted legislation under the Copyright/Patent Clause in 1790 when it passed bills creating federal patent and copyright protection. Because the content of that first legislation, the debate that accompanied it, and the differences between the initial versions and the bills that ultimately passed provide strong evidence of early Congresses' understanding of the constitutional limits of the Copyright/Patent Clause, I examine both the initial copyright and patent statutes.
        Congress first considered intellectual property statutes in its inaugural session in 1789. The bill debated, House Resolution 10--'a bill to promote the progress of science and useful arts, by securing to authors and inventors the exclusive right to their respective writings and discoveries,' 3 Documentary History of the First Federal Congress of the United States of America, March 4, 1789-March 3, 1791, p. 94 (L. DePauw, C. Bickford, & L. Hauptman, eds., 1977)-- provided both copyright and patent protection for similar terms.[FN5] The first Congress did not pass H. R. 10, though a similar version was reintroduced in the second Congress in 1790. After minimal debate, however, the House of Representatives began consideration of two separate bills, one covering patents and the other copyrights. Because, as the majority recognizes, 'congressional practice with respect to patents informs our inquiry,' ante, at 9, I consider the history of both patent and copyright legislation.

IV

        Since the creation of federal patent and copyright protection in 1790, Congress has passed a variety of legislation, both providing specific relief for individual authors and inventors as well as changing the general statutes conferring patent and copyright privileges. Some of the changes did indeed, as the majority describes, extend existing protections retroactively. Other changes, however, did not do so. A more complete and comprehensive look at the history of congressional action under the Copyright/Patent Clause demonstrates that history, in this case, does not provide the 'volume of logic,' ante, at 9, necessary to sustain the Sonny Bono Act's constitutionality.
        Congress, aside from changing the process of applying for a patent in the 1793 Patent Act, did not significantly alter the basic patent and copyright systems for the next 40 years. During this time, however, Congress did consider many private bills. Respondent seeks support from 'Congress's historical practice of using its Copyright and Patent Clause authority to extend the terms of individual patents and copyrights.' Brief for Respondent 13. Carefully read, however, these private bills do not support respondent's historical gloss, but rather significantly undermine the historical claim.
        The first example relied upon by respondent, the extension of Oliver Evans' patent in 1808, ch. 8, 6 Stat. 70, demonstrates the pitfalls of relying on an incomplete historical analysis. Evans, an inventor who had developed several improvements in milling flour, received the third federal patent on January 7, 1791. See Federico, Patent Trials of Oliver Evans, 27 J. Pat. Off. Soc. 586, 590 (1945). Under the 14-year term provided by the 1790 Patent Act, this patent was to expire on January 7, 1805. Claiming that 14 years had not provided him a sufficient time to realize income from his invention and that the net profits were spent developing improvements on the steam engine, Evans first sought an extension of his patent in December 1804. Id., at 598; 14 Annals of Congress 1002. Unsuccessful in 1804, he tried again in 1805, and yet again in 1806, to persuade Congress to pass his private bill. Undaunted, Evans tried one last time to revive his expired patent after receiving an adverse judgment in an infringement action. See Evans v. Chambers, 8 F. Cas. 837 (No. 4,555) (CC Pa. 1807). This time, his effort at private legislation was successful and Congress passed a bill extending his patent for 14 years. See An Act for the relief of Oliver Evans, 6 Stat. 70. This legislation, passed January 21, 1808, restored a patent monopoly for an invention that had been in the public domain for over four years. As such, this Act unquestionably exceeded Congress' authority under the Copyright/Patent Clause: 'The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose. ... 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, 383 U. S., at 5-6 (emphasis added).
        This extension of patent protection to an expired patent was not an isolated incident. Congress passed private bills either directly extending patents or allowing otherwise untimely applicants to apply for patent extensions for approximately 75 patents between 1790 and 1875. Of these 75 patents, at least 56 had already fallen into the public domain.[FN10] The fact that this repeated practice was patently unconstitutional completely undermines the majority's reliance on this history as 'significant.' Ante, at 9.
        Copyright legislation has a similar history. The federal Copyright Act was first amended in 1831. That amendment, like later amendments, not only authorized a longer term for new works, but also extended the terms of unexpired copyrights. Respondent argues that that historical practice effectively establishes the constitutionality of retroactive extensions of unexpired copyrights. Of course, the practice buttressess the presumption of validity that attaches to every Act of Congress. But, as our decision in INS v. Chadha, 462 U. S. 919 (1983), demonstrates, the fact that Congress has repeatedly acted on a mistaken interpretation of the Constitution does not qualify our duty to invalidate an unconstitutional practice when it is finally challenged in an appropriate case. As Justice White pointed out in his dissent in Chadha, that case sounded the 'death knell for nearly 200 other statutory provisions' in which Congress had exercised a 'legislative veto.' Id., at 967. Regardless of the effect of unconstitutional enactments of Congress, the scope of ' 'the constitutional power of Congress . . . is ultimately a judicial rather than a legislative question, and can be settled finally only by this Court.' ' United States v. Morrison, 529 U. S. 598, 614 (2000) (quoting Heart of Atlanta Motel, Inc. v. United States, 379 U. S. 241, 273 (1964) (Black, J., concurring)). For, as this Court has long recognized, '[i]t is obviously correct that no one acquires a vested or protected right in violation of the Constitution by long use, even when that span of time covers our entire national existence.' Walz v. Tax Comm'n of City of New York, 397 U. S. 664, 678 (1970).
        It would be particularly unwise to attach constitutional significance to the 1831 amendment because of the very different legal landscape against which it was enacted. Congress based its authority to pass the amendment on grounds shortly thereafter declared improper by the Court. The Judiciary Committee Report prepared for the House of Representatives asserted that 'an author has an exclusive and perpetual right, in preference to any other, to the fruits of his labor.' 7 Gales & Seaton, Register of Debates in Congress cxx (1831). The floor debate echoed this same sentiment. See, e.g., id., at 423 (statement of Mr. Verplanck (rejecting the idea that copyright involved 'an implied contract existing between an author and the public' for '[t]here was no contract; the work of an author was the result of his own labor' and copyright was 'merely a legal provision for the protection of a natural right')). This sweat-of-the- brow view of copyright, however, was emphatically rejected by this Court in 1834 in Wheaton v. Peters, 8 Pet., at 661 ('Congress, then, by this act, instead of sanctioning an existing right, as contended for, created it'). No presumption of validity should attach to a statutory enactment that relied on a shortly thereafter discredited interpretation of the basis for congressional power.[FN11]
        In 1861, Congress amended the term of patents, from a 14-year term plus opportunity for 7-year extension to a flat 17 years with no extension permitted. Act of Mar. 2, 1861, ch. 88, §16, 12 Stat. 249. This change was not retroactive, but rather only applied to 'all patents hereafter granted.' Ibid. To be sure, Congress, at many times in its history, has retroactively extended the terms of existing copyrights and patents. This history, however, reveals a much more heterogeneous practice than respondent contends. It is replete with actions that were unquestionably unconstitutional. Though relevant, the history is not dispositive of the constitutionality of Sonny Bono Act.
        The general presumption that historic practice illuminates the constitutionality of congressional action is not controlling in this case. That presumption is strongest when the earliest acts of Congress are considered, for the overlap of identity between those who created the Constitution and those who first constituted Congress provides 'contemporaneous and weighty evidence' of the Constitution's 'true meaning.' Wisconsin v. Pelican Ins. Co., 127 U. S. 265, 297 (1888). But that strong presumption does not attach to congressional action in 1831, because no member of the 1831 Congress had been a delegate to the framing convention 44 years earlier.
        Moreover, judicial opinions relied upon by the majority interpreting early legislative enactments have either been implicitly overruled or do not support the proposition claimed. Graham flatly contradicts the cases relied on by the majority and respondent for support that 'renewed or extended terms were upheld in the early days.' Ante, at 10.[FN12] Evans v. Jordan, 8 F. Cas. 872, 874 (No. 4,564) (CC Va. 1813) (Marshall, J.); Evans v. Robinson, 8 F. Cas. 886, 888 (No. 4,571) (CC Md. 1813); and Blanchard v. Sprague, 3 F. Cas. 648, 650 (No. 1,518) (CC Mass. 1839) (Story, J.) all held that private bills passed by Congress extending previously expired patents rights were valid. Evans v. Jordan and Evans v. Robinson both considered Oliver Evans' private bill discussed above while Blanchard involved ch. 213, 6 Stat. 589, which extended Thomas Blanchard's patent after it had been in the public domain for five months. Irrespective of what circuit courts held 'in the early days,' ante, at 10, such holdings have been implicitly overruled by Graham and, therefore, provide no support for respondent in the present constitutional inquiry.
        The majority's reliance on the other patent case it cites is similarly misplaced. Contrary to the suggestion in the Court's opinion, McClurg v. Kingsland, 1 How. 202 (1843), did not involve the 'legislative expansion' of an existing patent. Ante, at 10-11. The question in that case was whether the former employer of the inventor, one James Harley, could be held liable as an infringer for continuing to use the process that Harley had invented in 1834 when he was in its employ. The Court first held that the employer's use of the process before the patent issued was not a public use that would invalidate the patent, even if it might have had that effect prior to the amendment of the patent statute in 1836. 1 How., at 206-208. The Court then disposed of the case on the ground that a statute enacted in 1839 protected the alleged infringer's right to continue to use the process after the patent issued. Id., at 209-211. Our opinion said nothing about the power of Congress to extend the life of an issued patent. It did note that Congress has plenary power to legislate on the subject of patents provided 'that they do not take away the rights of property in existing patents.' Id., at 206. The fact that Congress cannot change the bargain between the public and the patentee in a way that disadvantages the patentee is, of course, fully consistent with the view that it cannot enlarge the patent monopoly to the detriment of the public after a patent has issued.
The history of retroactive extensions of existing and expired copyrights and patents, though relevant, is not conclusive of the constitutionality of the Sonny Bono Act. The fact that the Court has not previously passed upon the constitutionality of retroactive copyright extensions does not insulate the present extension from constitutional challenge.

V

        Respondent also argues that the Act promotes the useful arts by providing incentives to restore old movies. For at least three reasons, the interest in preserving perishable copies of old copyrighted films does not justify a wholesale extension of existing copyrights. First, such restoration and preservation will not even arguably promote any new works by authors or inventors. And, of course, any original expression in the restoration and preservation of movies will receive new copyright protection.[FN13] Second, however strong the justification for preserving such works may be, that justification applies equally to works whose copyrights have already expired. Yet no one seriously contends that the Copyright/Patent Clause would authorize the grant of monopoly privileges for works already in the public domain solely to encourage their restoration. Finally, even if this concern with aging movies would permit congressional protection, the remedy offered--a blanket extension of all copyrights--simply bears no relationship to the alleged harm.

VI

        Finally, respondent relies on concerns of equity to justify the retroactive extension. If Congress concludes that a longer period of exclusivity is necessary in order to provide an adequate incentive to authors to produce new works, respondent seems to believe that simple fairness requires that the same lengthened period be provided to authors whose works have already been completed and copyrighted. This is a classic non sequitur. The reason for increasing the inducement to create something new simply does not apply to an already-created work. To the contrary, the equity argument actually provides strong support for petitioners. Members of the public were entitled to rely on a promised access to copyrighted or patented works at the expiration of the terms specified when the exclusive privileges were granted. On the other hand, authors will receive the full benefit of the exclusive terms that were promised as an inducement to their creativity, and have no equitable claim to increased compensation for doing nothing more.
        One must indulge in two untenable assumptions to find support in the equitable argument offered by respondent--that the public interest in free access to copyrighted works is entirely worthless and that authors, as a class, should receive a windfall solely based on completed creative activity. Indeed, Congress has apparently indulged in those assumptions for under the series of extensions to copyrights, only one year's worth of creative work--that copyrighted in 1923--has fallen into the public domain during the last 80 years. But as our cases repeatedly and consistently emphasize, ultimate public access is the overriding purpose of the constitutional provision. See, e.g., Sony Corp., 464 U. S., at 429. Ex post facto extensions of existing copyrights, unsupported by any consideration of the public interest, frustrate the central purpose of the Clause.

VII

        The express grant of a perpetual copyright would unquestionably violate the textual requirement that the authors' exclusive rights be only 'for limited Times.' Whether the extraordinary length of the grants authorized by the 1998 Act are invalid because they are the functional equivalent of perpetual copyrights is a question that need not be answered in this case because the question presented by the certiorari petition merely challenges Congress' power to extend retroactively the terms of existing copyrights. Accordingly, there is no need to determine whether the deference that is normally given to congressional policy judgments may save from judicial review its decision respecting the appropriate length of the term.[FN14] It is important to note, however, that a categorical rule prohibiting retroactive extensions would effectively preclude perpetual copyrights. More importantly, as the House of Lords recognized when it refused to amend the Statute of Anne in 1735, unless the Clause is construed to embody such a categorical rule, Congress may extend existing monopoly privileges ad infinitum under the majority's analysis.
        By failing to protect the public interest in free access to the products of inventive and artistic genius--indeed, by virtually ignoring the central purpose of the Copyright/Patent Clause--the Court has quitclaimed to Congress its principal responsibility in this area of the law. Fairly read, the Court has stated that Congress' actions under the Copyright/Patent Clause are, for all intents and purposes, judicially unreviewable. That result cannot be squared with the basic tenets of our constitutional structure. It is not hyperbole to recall the trenchant words of Chief Justice John Marshall: 'It is emphatically the province and duty of the judicial department to say what the law is.' Marbury v. Madison, 1 Cranch 137, 177 (1803). We should discharge that responsibility as we did in Chadha.
        I respectfully dissent.

FN1. Justice Harlan wrote a brief concurrence, but did not disagree with this statement. Justice Black's statement echoed a portion of Attorney General Wirt's argument in Gibbons v. Ogden, 9 Wheat. 1, 171 (1824): 'The law of Congress declares, that all inventors of useful improvements throughout the United States, shall be entitled to the exclusive right in their discoveries for fourteen years only. The law of New-York declares, that this inventor shall be entitled to the exclusive use of his discovery for thirty years, and as much longer as the State shall permit. The law of Congress, by limiting the exclusive right to fourteen years, in effect declares, that after the expiration of that time, the discovery shall be the common right of the whole people of the United States.'

FN2. Attorney General Wirt made this precise point in his argument in Gibbons v. Ogden, 9 Wheat., at 175: 'The limitation is not for the advantage of the inventor, but of society at large, which is to take the benefit of the invention after the period of limitation has expired. The patentee pays a duty on his patent, which is an effective source of revenue to the United States. It is virtually a contract between each patentee and the people of the United States, by which the time of exclusive and secure enjoyment is limited, and then the benefit of the discovery results to the public.'

FN3. The Court acknowledges that this proposition is 'uncontroversial' today, see ante, at 11, n. 6, but overlooks the fact that it was highly controversial in the early 1800's. See n. 11, infra. The Court assumes that the Sears holding rested entirely on the pre-emptive effect of congressional statutes even though the opinion itself, like the opinions in Graham v. John Deere Co. of Kansas City, 383 U. S. 1 (1966), and Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141 (1989), also relied on the pre-emptive effect of the constitutional provision. That at least some of the Framers recognized that the Constitution itself imposed a limitation even before Congress acted is demonstrated by Madison's letter, quoted in n. 6, infra.

FN4. 'The copyright law, like the patent statutes, makes reward to the owner a secondary consideration. In Fox Film Corp. v. Doyal, 286 U. S. 123, 127, Chief Justice Hughes spoke as follows respecting the copyright monopoly granted by Congress, 'The sole interest of the United States and the primary object in conferring the monopoly lie in the general benefits derived by the public from the labors of authors.' It is said that reward to the author or artist serves to induce release to the public of the products of his creative genius.' 334 U. S., at 158.

FN5. A copy of this bill specifically identified has not been found, though strong support exists for considering a bill from that session as H. R. 10. See E. Walterscheid, To Promote the Progress of Useful Arts: American Patent Law and Administration, 1798-1836, pp. 87-88 (1998) (hereinafter Walterscheid). This bill is reprinted in 4 Documentary History 513-519.

FN6. 'Your idea of appropriating a district of territory to the encouragement of imported inventions is new and worthy of consideration. I can not but apprehend however that the clause in the constitution which forbids patents for that purpose will lie equally in the way of your expedient. Congress seem to be tied down to the single mode of encouraging inventions by granting the exclusive benefit of them for a limited time, and therefore to have no more power to give a further encouragement out of a fund of land than a fund of money. This fetter on the National Legislature tho' an unfortunate one, was a deliberate one. The Latitude of authority now wished for was strongly urged and expressly rejected.' Madison's description of the Copyright/Patent Clause as a 'fetter on the National Legislature' is fully consistent with this Court's opinion in Graham.

FN7. Importantly, even this first Act required a quid pro quo in order to receive federal copyright protection. In order to receive protection under the Act, the author was first required to register the work: 'That no person shall be entitled to the benefit of this act, in cases where any map, chart, book or books, hath or have been already printed and published, unless he shall first deposit, and in all other cases, unless he shall before publication deposit a printed copy of the title of such map, chart, book or books, in the clerk's office of the district court where the author or proprietor shall reside.' §3, 1 Stat. 124. This registration requirement in federal district court--a requirement obviously not required under the various state laws protecting written works--further illustrates that the 1790 Act created new rights, rather than extending existing rights.

FN8. Respondent's reformulation of the questions presented by this case confuses this basic distinction. We granted certiorari to consider the question: 'Did the D. C. Circuit err in holding that Congress has the power under the Copyright Clause to extend retroactively the term of existing copyrights?' Respondent's reformulation of the first question presented-- 'Whether the 20-year extension of the terms of all unexpired copyrights . . . violates the Copyright Clause of the Constitution insofar as it applies to works in existence when it took effect'--significantly changes the substance of inquiry by changing the focus from the federal statute at issue to irrelevant common-law protections. Brief for Respondent I. Indeed, this reformulation violated this Court's Rule 24(1)(a), which states that 'the brief [on the merits] may not raise additional questions or change the substance of the questions already presented in' the petition for certiorari.

FN9. 'A LETTER to a Member of Parliament concerning the Bill now depending . . . for making more effectual an Act in the 8th year of the Reign of Queen Anne, entituled, An Act for the Encouragement of Learning by ... Vesting the Copies of Printed Books in the Authors or Purchasers.' Document reproduced in Goldsmiths'--Kress Library of Economic Literature, Segment 1: Printed Books Through 1800, Microfilm No. 7300 (reel 460).

FN10. See, e.g., ch. 74, 6 Stat. 458 (patent had expired for three months); ch. 113, 6 Stat. 467 (patent had expired for over two years); ch. 213, 6 Stat. 589 (patent had expired for five months); ch. 158, 9 Stat. 734 (patent had expired for over two years); ch. 72, 14 Stat. 621 (patent had expired nearly four years); ch. 175, 15 Stat. 461 (patent had expired for over two years); ch. 15, 16 Stat. 613 (patent had expired for six years); ch. 317, 16 Stat. 659 (patent had expired for nearly four years); ch. 508, 17 Stat. 689 (patent had expired for over two years).

FN11. In the period before our decision in Wheaton, the pre--emptive effect of the Patent/Copyright Clause was also a matter of serious debate within the legal profession. Indeed, in their argument in this Court in Gibbons v. Ogden, 9 Wheat., at 44-61, 141-157, the defenders of New York's grant of a 30-year monopoly on the passenger trade between New Jersey and Manhattan argued that the Clause actually should be interpreted as confirming the State's authority to grant monopoly privileges that supplemented any federal grant. That argument is, of course, flatly inconsistent with our recent unanimous decision in Bonito Boats v. Thundercraft Boats, Inc., 489 U. S 141 (1989). Although Attorney General Wirt had urged the Court to endorse our present interpretation of the Clause, its implicit limitations were unsettled when the 1831 Copyright Act was passed.

FN12. It is true, as the majority points out, ante at 11, n. 5, that Graham did not expressly overrule those earlier cases because Grahamdid not address the issue whether Congress could revive expired patents. That observation does not even arguably justify reliance on a set of old circuit court cases to support a proposition that is inconsistent with our present understanding of the limits imposed by the Copyright/Patent Clause. After all, a unanimous Court recently endorsed the precise analysis that the majority now seeks to characterize as 'wishful thinking.' Ante, at 11, n. 5. See Bonito Boats, 489 U. S., at 146 ('Congress may not create patent monopolies of unlimited duration, nor may it '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' ' (quoting Graham, 383 U. S., at 6 )).

FN13. Indeed, the Lodging of the Motion Picture Association of America, Inc., as Amicus Curiae illustrates the significant creative work involved in releasing these classics. The Casablanca Digital Video Disc (DVD) contains a 'documentary You Must Remember This, hosted by Lauren Bacall and featuring recently unearthed outtakes' and an '[a]ll-new introduction by Lauren Bacall.' Disc cover text. Similarly, the Citizen Kane DVD includes '[t]wo feature-length audio commentaries: one by film critic Roger Ebert and the other by director/Welles biographer Peter Bogdanovich' and a 'gallery of storyboards, rare photos, alternate ad campaigns, studio correspondence, call sheets and other memorabilia' in addition to a 2-hour documentary. Disc cover text.

FN14. Similarly, the validity of earlier retroactive extensions of copyright protection is not at issue in this case. To decide the question now presented, we need not consider whether the reliance and expectation interests that have been established by prior extensions passed years ago would alter the result. Cf. Heckler v. Mathews, 465 U. S. 728, 746 (1984) ('We have recognized, in a number of contexts, the legitimacy of protecting reasonable reliance on prior law even when that requires allowing an unconstitutional statute to remain in effect for a limited period of time'). Those interests are not at issue now, because the act under review in this case was passed only four years ago and has been under challenge in court since shortly after its enactment.