In this case, two archives ask the U.S. District Court for the
Northern District of California to hold that statutes that extended
copyright terms unconditionally — the Copyright Renewal Act and the
Copyright Term Extension Act (CTEA)— are unconstitutional under the
Free Speech Clause of the First Amendment, and that the Copyright
Renewal Act and CTEA together create an “effectively perpetual” term
with respect to works first published after January 1, 1964 and before
January 1, 1978, in violation of the Constitution’s Limited Times and
Promote...Progress Clauses. The Complaint asks the Court for a
declaratory judgment that copyright restrictions on orphaned works —
works whose copyright has not expired but which are no longer available
— violate the constitution. Share your experiences trying to use
orphaned works here.
The Internet Archive and the Prelinger Archive have filed their opposition to the government’s motion to dismiss in Kahle v. Ashcroft,
a case challenging the constitutionality of Congress’s removal from the
copyright laws of our traditional system of formalities (i.e.,
registration, notice, renewal). CIS’s Larry Lessig, Jennifer Granick
and Chris Sprigman represent plaintiffs. Here’s the opening paragraphs
of our brief:
This case is about the speech-related harms caused when Congress
radically changed the nature of American copyright law. For the first
186 years of our Republic, copyright laws established an “opt-in”
system, one in which copyrights were secured only to those who took
steps to claim them. In 1976 and 1989, Congress inverted this regime,
transforming copyright law into an “opt-out” system, one in which
rights are granted automatically and indiscriminately unless disclaimed.
Under the principle articulated in Eldred v. Ashcroft, 537
U.S. 186, 221, 123 S. Ct. 769, 790 (2003), this radical change in a
“traditional contour of copyright” requires First Amendment scrutiny.
Plaintiffs in Eldred had asked the Court to apply ordinary
First Amendment review to every change in copyright law. The Court
refused that request. The government in Eldred had asked the
Court to affirm the judgment of the Court of Appeals below, finding
copyright “categorically immune from challenges under the First
Amendment.” Eldred v. Reno, 239 F.3d 372, 375 (D.C. Cir. 2001).
The Court refused that request as well. Instead, the Court anchored
First Amendment review to the “traditional contours” of copyright
protection. Laws that respected those “traditional contours,” the Court
held, would suffer “no further First Amendment scrutiny.” But by
implication, and as the government concedes, changes to those
“traditional contours” would require “further First Amendment scrutiny.”
The changes to the U.S. copyright system at issue in this case
profoundly affect copyright’s “traditional contours.” Indeed, as
plaintiffs would show at trial, very few changes in the contours of
copyright law could have as significant an effect on First Amendment
values. If any alternation to copyright laws can be characterized as a
shift in the “traditional contours of copyright,” these can.
In a series of statutes over a relatively short period of time,
Congress shifted copyright from an opt-in to an opt-out regime, by
removing from our law a core set of copyright formalities. These
formalities, including (1) registration, (2) notice, and (3) renewal
(hereafter, “opt-in formalities”), were required of copyright owners
for them to secure initial, and continued, copyright protection.
The removal of formalities utterly changed the nature and reach of
American copyright law. For 186 years of the American Republic, the
purpose and effect of these opt-in formalities was to narrow the reach
of copyright law to those works that had a continuing copyright-related
interest. Given the limits that these opt-in formalities placed on the
reach of the law, copyright burdened relatively few creative works, and
hence burdened very few beyond commercial creators. The law thus left
essentially unburdened archivists, preservationists, libraries, and
But by stripping out copyright’s opt-in formalities, Congress has
reversed this traditional pattern. Whereas copyright regulation before
was the exception, now it is the rule. Whereas the burden of copyright
before was effectively limited to works that had some continuing
commercial viability, the burden of copyright now is spread broadly and
indiscriminately to all creative works regardless of any continued
commercial interest in the copyright. Whereas traditionally, the
contours of American copyright law guaranteed that this regulation of
speech was reasonably and effectively tailored to a viable commercial
interest, today this regulation of speech burdens effectively all
creative work, regardless of any continuing commercial interest in
“Authors” to control its dissemination or use. Works today that have no
continuing commercial use, but continue under the regulations of
copyright, are effectively orphaned by the current regime.
These changes would have been significant at any time in our
history. But they are especially burdensome now. Just at the time that
digital technologies could enable an explosion in creative reuse of our
culture, the burdens of an opt-out system of copyright make most reuse
of orphaned work essentially impossible. Libraries and archives could
use these digital technologies to make available an extraordinary range
of our creative past. Yet the law now imposes burdens that make this
reuse essentially impossible.
At trial, plaintiffs will introduce historical data showing the
real-world effect of these changes in legal doctrine. Plaintiffs will
show that under the traditional opt-in copyright system, a large share
of published materials—perhaps as much as half—was never subject to
copyright because rights-holders chose not to claim copyright. And even
for those works that were copyrighted, more than 85% fell out of
copyright after their initial term. These data will thus
demonstrate that the most significant determinant of copyright’s reach,
and hence, the most significant determinant of Free Speech values, were
these opt-in formalities. There is therefore likely no other change in
copyright law that would have as dramatic an effect on free speech
The government will file its reply on October 8, and a hearing in
front of Judge Maxine Chesney (U.S. District Court, Northern District
of Calif.) is scheduled for October 29. You can learn more about Kahle v. Ashcroft here.
For those interested in the broader issues raised by the demise of
mandatory copyright formalities, you may wish to take a look at an
article by Chris Sprigman, Reform(aliz)ing Copyright, that will be published later this year in the Stanford Law Review.
1. What’s this case about?
It is about freeing our culture from unnecessary and harmful
regulation. It is about a series of recent changes to copyright law
that have failed to benefit copyright owners, but have instead created
serious burdens on those who create culture in the digital environment.
Plaintiffs in this case — the Internet Archive and its Chairman,
Brewster Kahle, and the Prelinger Film Archive (formally, Prelinger
Associates, Inc.) and its President, Richard Prelinger — are filing
suit seeking a declaratory judgment that the current system of
unconditional copyright is unconstitutional.
2. What changes?
From the first U.S. copyright statute in 1790 until the Copyright
Act of 1976, the U.S. had a conditional copyright system that limited
copyright protection to those who took affirmative steps to claim it —
by, for example, registering their copyright, marking copies of their
work with copyright notice, and renewing their copyright after a
relatively short initial period of protection. (The registration,
notice and renewal requirements are often referred to as “copyright
Our tradition of conditional copyright stands in stark contrast to
what we have today — an unconditional system that grants copyright
protection whether or not an author desires it. Our current
unconditional system grants copyright protection whether or not the
work is registered, marked, or renewed. Formalities, where they have
been retained at all, are voluntary and do not effect the existence or
continuation of copyright. Protection is indiscriminate, and automatic.
3. Isn’t this just Eldred v. Ashcroft all over again?
No. Or only to the pundits who don’t read before they write. Eldred
v. Ashcroft involved a challenge to the constitutionality of the
Copyright Term Extension Act (CTEA), which extended the term of both
existing and future copyrights by 20 years. In 2003, the Supreme Court
rejected these challenges. Eldred focused narrowly on the
constitutionality of the CTEA’s extension of the term of subsisting
copyrights; the Court held that these extensions did not violate the
First Amendment or the Progress Clause. Eldred did not deal at all with
the constitutional implications of the shift from conditional to
4. Is Eldred relevant to this new case?
Interestingly, the Court in Eldred did say something that supports
the claims plaintiffs are making in this new case. The Court held in
Eldred that changes to the copyright laws that do not alter the
traditional contours of copyright protection are unlikely to burden
speech in a way that might offend the First Amendment. By implication,
when Congress does alter the traditional contours of copyright
protection — as it has by shifting copyright from a conditional to an
unconditional system — the changes to the law should be subject to
heightened scrutiny under the First Amendment to determine whether they
impermissibly burden speech. For reasons explained in detail in the
complaint, the shift from conditional to unconditional copyright
creates significant burdens on speech that cannot withstand First
5. You’re talking about the removal of copyright “formalities” like
registration and renewal. That seems like such a minor issue. Why
should I care?
The move from conditional to unconditional copyright has had a
number of unintended consequences. It has failed to benefit authors. It
has imposed burdens on free speech and the creation of culture —
burdens which have grown as digital technologies like the Internet
lower the non-copyright barriers to creating and disseminating culture.
It has moved copyright much closer to a collision with the
6. How does “unconditional copyright” create these problems?
Under our traditional system of conditional copyright, the
overwhelming majority (as much as 90%) of published works were neither
registered nor noticed, and thus passed immediately into the public
domain, where they were freely usable by others without the need to ask
permission. Of the minority of works that were registered and noticed,
and therefore protected by copyright, over 85% were not renewed after a
relatively short (28 years) initial period of protection. These works
also passed into the public domain. Our traditional copyright rules
thus kept a vast amount of creative work wholly free of the burdens of
copyright regulation — a freedom, it should be noted, that was granted
by an author’s voluntary decision not to register his work. Even for
the subset of works for which authors secured copyright, the
conditional regime’s registration requirement served to keep records of
works for which copyright was claimed, and moved most protected work
into the public domain after a relatively short initial term — again,
by the voluntary decision of the author. Both the existence and
duration of copyright regulation was effectively narrowed to just those
works that the author or his assigns had a desire to protect.
7. How is today’s copyright law different?
Under our current unconditional system, all works are automatically
locked up — regardless of the will of the author — for the full term of
copyright, which has been lengthened substantially. The unconditional
system also destroys the records of ownership that mandatory
registration under the conditional system once provided. The
combination of automatic and indiscriminate copyright, plus the absence
of information about ownership, makes re-use of creative works
practically impossible for many would-be users.
8. Can you give some examples of the harm you’re talking about?
Just take a look at the experience of one of the plaintiffs in this
case. The Internet Archive, in partnership with Carnegie Mellon
University, the National Science Foundation, and the governments of
India and China, have been working on the “Million Book Project,”
which, when complete, will offer free access to a fully-readable online
library of one million digitized books. This is an innovative project
that will use the low-cost distribution mechanism the Internet provides
to increase public access to important works.
The Million Book Project isn’t focused on commercially successful
books — those are available at bookstores. The project will include a
number of books in the public domain — those that are free of copyright
protection and thus usable without the need to obtain permission. But
many books fall into a nether region. These are works that are not
commercially viable and therefore not widely available to the public,
but are nevertheless subject to continuing copyright protection. The
Internet Archive wants to include many of these books, which we refer
to as “orphan works,” in the Million Book Project, but current law
makes that very difficult.
9. How does current law create “orphan works?”
Works that have no continuing copyright value don’t attract the
interest of commercial publishers. They nonetheless remain subject to
copyright-related burdens (i.e., the necessity of clearing rights) that
prevent organizations like the Internet Archive from archiving them,
preserving them, or making them widely accessible for study and
creative re-use. Under our traditional regime of conditional copyright,
these works would have been filtered out of the copyright system — many
of these works would never have been registered, or, if registered,
never renewed. But under today’s unconditional system, there is no
filtering mechanism to separate these works from commercially viable
works that legitimately are the focus of copyright.
So if the Internet Archive wants to include an orphan work in the
Million Book Project, it must obtain permission from the work’s owner.
But figuring out who the owner is, and how to contact him, is difficult
and expensive (especially in the absence of a reliable registry). Thus
far, the difficulty of identifying rights-holders and clearing
copyright under current copyright laws has largely limited the Million
Book Project to government documents, old texts, and books from India
and China, where copyright laws are less burdensome.
10. If unconditional copyright is so bad, why did Congress pick it?
It is important to note that the shift from conditional to
unconditional copyright happened relatively recently — the process
began with the Copyright Act of 1976, which eliminated the registration
and notice requirements, and cut back on the renewal requirement, and
culminated in the 1992 Berne Convention Implementation Act, which
removed what was left of the renewal requirement. These changes
happened because the U.S. wanted to adhere to the Berne Convention for
the Protection of Literary and Artistic Works. The Berne Convention is
the most significant international treaty governing copyright, and it
includes a provision prohibiting member states from imposing copyright
formalities on the works of authors from other member states.
11. Why is it important to file this lawsuit now?
The move to unconditional copyright came just at a time when digital
technologies like the Internet could enable the archiving, preservation
and reuse of content at a level never imagined before. For 186 years,
American law limited the grant of copyright to those authors who
claimed the need for copyright protection. But because of the
indiscriminate nature of copyright today, the burden of copyright
regulation extends to work whether or not the author or other
rightsholder has any need for continuing protection. That unnecessary
burden blocks the cultivation of our culture and the spread of
12. So what are you asking the court to do?
The plaintiffs in this case, the Internet Archive and its Chairman,
Brewster Kahle, and the Prelinger Film Archive (formally, Prelinger
Associates, Inc.) and its President, Richard Prelinger, are filing suit
seeking a declaratory judgment that the current system of unconditional
copyright is unconstitutional. Plaintiffs contend, among other things,
that unconditional copyright creates unreasonable burdens on speech in
violation of the First Amendment, and creates effectively perpetual
copyright terms in violation of the Progress Clause (the provision in
the Constitution that grants Congress power to legislate with respect
to copyrights and patents).
13. If you win, how could copyright law change?
There are many ways Congress could change the copyright law back to
a conditional system and still remain in compliance with the Berne
Convention. One way would be to re-impose formalities for all works of
U.S. authors — these are most works published in the U.S., and Berne
doesn’t prohibit signatory nations from imposing formalities on their
own authors. Another would be to pass the Public Domain Enhancement Act,
which would impose a tiny renewal fee designed to move unused
copyrighted work into the public domain. The PDEA also wouldn’t violate
Berne, because it would apply only to works of U.S. authors.
14. What’s the relationship of this case to the PDEA?
Of course if the PDEA were passed, that might moot the necessity of
this case. But so far, we have not seen substantial support in Congress
for the PDEA, which makes necessary our resort to the courts.
14. Who can I contact if I want to learn more?
Email Chris Sprigman, Fellow at the Center for Internet and Society, at Sprigman-at-stanford.edu, or call him at 650-725-9451.