The Supreme Court, in Golan v. Holder, U.S. Supreme Court, Slip Opinion No. 10-545 (decided January 18, 2012), approved an act of Congress that transformed the status of foreign works which had been in the public domain for many years if not decades to that of copyright protected status. This will have an effect on live and recorded musical performances and the publication of printed material, which in turn affects the use of foreign works in advertising and marketing campaigns that previously could be used royalty free. The Act in question is the Uruguay Round of Agreement Act (Title 17 U.S.C. §104A), enacted in 1994. The Act “restored” copyright protection to certain foreign works which were in the public domain. Although the Act protects exploiters of the affected works prior to the Act’s passage, prospectively the restoration placed those foreign works on an equal footing with US works.
The genesis of passage of the Act was America’s decision in 1989 to finally join the 1886 Berne Convention for the Protection of Literary and Artistic Works. The members of the Berne Convention agree to provide a minimum level of copyright protection and to treat authors from other member countries as well as they treat their own. Article 18 of Berne requires countries to protect the works of other member states unless the works’ copyright term has expired in either the country where protection is claimed or in the country of origin. Between 1891 and 1989, US copyright protection of foreign authors was limited to those whose works were published in the US and to those whose countries granted reciprocal protection to US authors. Prior to 1891, all foreign works were excluded from US copyright protection making the US the “Barbary coast of literature”, according to a US Senator in 1891.
Of significance, foreign works already in the public domain at the time the US joined the Convention remained in the public domain. As the Supreme Court pointed out, this approach by the US to Berne did not sit well with other members of the Convention. Partly in response to those complaints, the 1994 Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS agreement) required all Berne signatories to adopt articles of the Berne Convention effectively requiring, by threat of WTO enforcement, certain categories of works that had been in the US public domain to be made subject to copyright protection. In response, Congress passed the Uruguay Round of Agreement Act, Section 514 of which granted protection to those categories of foreign works. The Act is appended to the Court’s opinion in Golan v. Holder.
The petitioners in Golan v. Holder were orchestra conductors, musicians, publishers, and others who formerly enjoyed free access to works that the Act removed from the public domain. The Court held that Congress did not exceed its authority under the Copyright and Patent Clause Art. I, § 8, cl. 8. Additionally, the Court held that the First Amendment did not inhibit Congress from restoring copyright status to works in the public domain. The Court pointed out that Congress had previously granted copyright protection to works in the public domain by enacting the Copyright Act of 1790 (which granted copyright protection to works that already had been published in the US) showing that the First Congress “did not view the public domain as inviolate.” One of the points made by the dissent, per Justice Breyer joined by Justice Alito, is that tradition and case law in the US sets us apart from continental Europe and inhibits us from harmonizing our copyright laws with those of countries in the civil-law tradition. The majority specifically disagreed with that dissenting position.
What is the effect of the Act now that it has been held constitutional? As the Supreme Court put it, Prokofiev’s Peter and the Wolf could once be performed free of charge, but now the right to perform it must be obtained in the marketplace just like the works of American composers Bernstein and Copeland.