On Monday, the Ninth Circuit Court of Appeals threw out the case of Kahle v. Gonzales, which sought to challenge the U.S.'s change from an "opt-in" copyright system to an "opt-out" system between 1976 and 1992. The ruling was a setback for those seeking to free works that are no longer commercially valuable from the grips of copyright law.

The case is important because recent advances have made it technologically feasible to scan, store, and distribute public-domain works at extremely low cost. There are several efforts to do just that, including the commercial Google Book Search and Brewster Kahle's non-profit Internet Archive. Only copyright prevents these projects from making hundreds of thousands of works created between 1964 and 1977 available for free via the Internet. Kahle's suit sought to overturn the changes in copyright law that prevented those works from falling into the public domain if their authors did not renew their copyrights.

The Eldred decision

The Kahle case has its roots in the 2002 Supreme Court decision of Eldred v. Ashcroft. The plaintiff in that case, Eric Eldred, was a publisher of public-domain books. He was represented by Stanford law professor Lawrence Lessig. Eldred and Lessig argued that the 1998 Sonny Bono Copyright Term Extension Act, which extended the term of most copyrights to the life of the author plus 70 years, was unconstitutional for two reasons. First, retroactively extending the term of copyrights violated the Constitution's requirement that copyrights be granted only "for limited times." Second, the act violated the First Amendment by unduly burdening those who wished to make use of works that would otherwise have fallen into the public domain.

The Supreme Court rejected those arguments. It held that although the life of the author plus 70 years is a long term, it is still limited as the Constitution requires. And they ruled that because the CTEA had not changed "the traditional contours of copyright protection," it did not require further scrutiny under the First Amendment.

The Kahle case

Lessig seized on the phrase "traditional contours" and used it as the basis of a new lawsuit, which he filed in 2004. Entrepreneur Brewster Kahle, the chairman of the Internet Archive, was the lead plaintiff.

The Internet Archive is a partner in the Million Book Project, an ambitious effort to scan a million books and make them available to the general public. The Archive also distributes some films from the Prelinger Archives, a vast storehouse of obscure 20th century films. Copyright law hampers both efforts, because all works created since 1964—even works with no commercial value—are still under copyright.

Kahle's lawsuit challenges recent changes to copyright law that have hampered the efforts of the Million Book Project and the Prelinger Archives. Prior to 1976, obtaining a copyright required observing certain formalities, including registering the work with the Copyright Office. And maintaining copyright protection had required renewing the copyright after 28 years. But between 1976 and 1992, Congress gradually made those formalities optional. Since 1992, copyright protection is automatically granted to creative works whether the author wants it or not, and no renewals are required to preserve copyright protection for the full term available—now set at the life of the author plus 70 years.

While that saves authors some hassle, it has also resulted in hundreds of thousands of out-of-print works remaining under copyright that otherwise would have fallen into the public domain. In many cases, it's not even possible to locate the copyright holder in order to ask for permission to use the works. These so-called "orphan works" are needlessly excluded from projects that build on the public domain.

In their complaint, Lessig and Kahle noted that the vast majority of works published between 1964 and 1977 would have fallen into the public domain had Congress not eliminated the renewal requirement for those works in 1992. They argued that such a dramatic expansion of the number of older works covered by copyright amounts to a significant departure from the "traditional contours" of copyright law. And under Eldred, they argued, changes in the "traditional contours" require First Amendment scrutiny.

They also said that the issue was given new urgency by recent technological developments. The orphan-works problem wouldn't have mattered very much in the 1970s because there was simply no economically feasible way to make out-of-print books available to a wide audience. The Internet has changed that. Whereas the switch to an opt-out regime may have seemed like a minor change in 1976, recent technological developments have made it far more significant.

The courts were not persuaded. The district court dismissed the case in November 2004, ruling that the Supreme Court had already addressed Kahle's arguments in Eldred. On Monday, the Ninth Circuit agreed and upheld the lower court's dismissal. In its opinion, the Ninth Circuit accused the plaintiffs of making "essentially the same argument, in different form, that the Supreme Court rejected in Eldred." Neither court was persuaded by the contention that the switch to an opt-out regime changed the "traditional contours" of copyright law.

Promoting progress

Kahle plans to appeal the ruling to a larger panel of the Ninth Circuit, but their prospects don't look good. With three Ninth Circuit judges already ruling against him, Kahle will face an uphill battle convincing the full Ninth Circuit that his arguments are different from those the Supreme Court raised in Eldred.

That's a shame, because Kahle's lawsuit highlights a serious and growing problem. New technologies are greatly enhancing the opportunity to make better use of older creative works. Books that have traditionally sat unread on dusty library shelves can now be made available in searchable form via the Internet. Old films that once languished unwatched in vaults could be digitized and made available for consumers to view in their living rooms. The main thing standing in the way is copyright law.

If the courts ultimately reject Kahle's arguments, the battle to free orphan works will shift back to Congress. Some scholars have suggested that Congress should enact an orphan-works defense that would shield individuals who reproduced a copyrighted work after making a diligent effort to find the copyright holder. The UK's Gowers Review has recommended that a similar rule be adopted in the European Union. Although this would not make orphan works as widely available as placing them in the public domain, it might be enough for the likes of Kahle and Google.

Fixing the orphan-works problem is especially relevant to Google, which is embroiled in litigation with publishers over Google Book Search. Regardless of the outcome of that battle, a solution to the orphan-works problem would greatly expand the number of works that Google could include in its products. The company could benefit both itself and the general public by throwing its weight behind efforts like the Kahle case and orphan-work reform legislation.

Copyright has traditionally focused on providing economic incentives for the commercial creation and distribution of creative works. But in recent decades, copyright law has increasingly begun to regulate non-commercial creative activities that are not primarily motivated by financial goals. Vigilance is required to ensure that the copyright system does not become a serious obstacle to these non-commercial endeavours, so that it continues to "promote the progress of science and useful arts" as the Constitution requires.