In 1994, Congress jammed a batch of foreign books and movies back into the copyright closet. They had previously fallen into the public domain for a variety of technical reasons (the author hadn't renewed the rights with the US Copyright Office, the authors of older works hadn't included a copyright notice, etc.) and companies and individuals had already started reusing the newly public works. Did Congress have the right to put a stop to this activity by shoving the works back into copyright? On Friday, a federal court said no.

"Traditional contours of copyright"

1994's Uruguay Round Agreements Act (URAA) brought US intellectual property law in line with that of other countries. Section 514 of URAA better aligned US copyright law with the international Berne Convention, one of the earliest international intellectual property treaties. Though Berne had first been signed back in 1886, the US hadn't joined up until a century later, in 1988.

Part of Berne requires countries to honor copyright on foreign works, so long as those works remain protected in their country of origin. Before URAA was passed, foreign works still received copyright protection in the US, but only on US terms. This meant that works began to leave copyright and enter the public domain in the US even though some were still granted copyright protection in their home countries. After signing URAA, these works reverted into copyright in the US.

Lawrence Lessig and a team from Stanford have been arguing for years in Golan v. Gonzales (now Golan v. Holder) that Congress overstepped its authority when it did this. A federal court disagreed and issued a summary judgment against Golan, a music teacher who had been freely using Prokofiev sheet music before it reverted back into copyright. But the 10th Circuit Court of Appeals said back in 2007 that the case should be reconsidered on First Amendment grounds. Last week, the federal judge who oversaw the trial changed his ruling and agreed that URAA violated the First Amendment.

How? In another famous copyright case also argued by Lessig (Eldred v. Ashcroft), the Supreme Court had found that Congressional copyright action could be overturned if it "altered the traditional contours of copyright protection." Lessig seized on this phrase, arguing that putting public domain works back under copyright was unprecedented in US law.

The Tenth Circuit generally agreed, which meant that the justices opened the door to a review of URAA's legality on First Amendment grounds. "Together, the public in general and these plaintiffs in particular have a First Amendment interest in using works in the public domain," noted the court in 2007. "In reliance on their rights to these works, plaintiffs have already performed or planned future performances and used these publicly available works to create their own artistic productions. By removing works in the public domain, [URAA] arguably hampers free expression and undermines the values the public domain is designed to protect."

In the new ruling, Judge Lewis Babcock conducted his First Amendment analysis and concluded that URAA did change the "traditional contours of copyright" in one important sense: it meant that the copyright sequence no longer moves only from protection to public domain. Indeed, at the whim of Congress, public domain works can now migrate into copyright. "Such an alteration is inconsistent with the copyright scheme as designed by the Framers and as implemented by Congress in the ensuing years," wrote Babcock.

Sweet vindication

Anthony Falzone, who heads up the Fair Use Project at Stanford and has been involved in the case, called it a "big deal" because "it is the first time a court has held any part of the Copyright Act violates the First Amendment and the first time any court has placed specific constitutional limits on the government's ability to erode the public domain."

Lawrence Lessig, was just as pleased, saying that he was "very happy and very very proud to report a big victory" in the case. Lessig titled his statement, "From the there's-no-way-in-hell-you'll-win-that-one department," a phrase he must have heard many time since taking the case. (He came in for similar criticism for the Eldred case, especially after losing at the Supreme Court.)

While further appeals are likely in such a prominent case, Lessig & Co. can at least take some momentary comfort from confounding the naysayers and finding the edge of Congressional authority to tinker with copyrights.