No. 01-618 

In the Supreme Court of the United States 

ERIC ELDRED, ET AL., PETITIONERS 

v. 

JOHN D. ASHCROFT 

ON PETITION FOR A WRIT OF CERTIORARI 
TO THE UNITED STATES COURT OF APPEALS 
FOR THE DISTRICT OF COLUMBIA CIRCUIT 

BRIEF FOR THE RESPONDENT IN OPPOSITION 

THEODORE B. OLSON 

Solicitor General 

Counsel of Record 

ROBERT D. MCCALLUM, JR. 

Assistant Attorney General 

WILLIAM KANTER 
JOHN S. KOPPEL 

Attorneys 

Department of Justice 
Washington, D.C. 20530 
(202) 514-2217 

QUESTIONS PRESENTED 

1. Whether the 20-year extension of the terms of all 
copyrights, set forth in the Copyright Term Extension 
Act of 1998 (CTEA), Pub. L. No. 105-298, 112 Stat. 
2827, violates the Copyright Clause of the Constitution. 

2. Whether the CTEA’s 20-year extension of the 
terms of all copyrights violates the First Amendment. 

3. Whether a court of appeals may decline to con- 
sider arguments raised by an amicus that differ from 
the arguments raised by the party that the amicus 
seeks to support. 

(I) 

TABLE OF CONTENTS 

Page 

Opinions below ............................................................................... 
1 

Jurisdiction ...................................................................................... 1 

Statement ........................................................................................ 2 

Argument ........................................................................................ 11 

Conclusion ....................................................................................... 24 

TABLE OF AUTHORITIES 

Cases: 

Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 

1999) ......................................................................................... 16-17 

Ashwander v. Tennessee Valley Auth., 297 U.S. 288 

(1936) ........................................................................................ 10 

Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 

53 (1884) ................................................................................. 

9, 15 

CBS Broad., Inc. v. Echostar Communications 

Corp., 265 F.3d 1193 (11th Cir. 2001) ................................. 

22 

Davis v. United States, 417 U.S. 333 (1974) ....................... 

21 

Erickson v. Trinity Theatre, 13 F.3d 1061 (7th Cir. 

1994) ......................................................................................... 16 

Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 

499 U.S. 340 (1991) ............................................................... 

7, 12 

Frantz Mfg. Co. v. Phenix Mfg. Co., 457 F.2d 314 

(7th Cir. 1972) ..................................................................... 

14, 16 

Graham v. John Deere Co., 383 U.S. 1 (1966) .................... 

12 

Greenberg v. National Geographic Soc’y, 244 F.3d 

1267 (11th Cir.), cert. denied, 122 S. Ct. 347 

(2001) ...................................................................................... 17 

Harper & Row, Publishers, Inc. v. Nation 

Enters., 471 U.S. 539 (1985) ..................................... 

3, 4, 5, 19 

Ladd v. Law & Technology Press, 762 F.2d 809 

(9th Cir. 1985), cert. denied, 475 U.S. 1045 (1986) ........... 

8 

McClurg v. Kingsland, 42 U.S. (1 How.) 202 

(1843) ........................................................................................ 4, 9 

(III) 

IV 

Cases—Continued: Page 

Mitchell Bros. Film Group v. Cinema Adult 

Theater, 604 F.2d 852 (5th Cir. 1979), cert. denied, 

445 U.S. 917 (1980) ............................................................. 

15, 16 

New Jersey v. New York, 523 U.S. 767 (1998) ............... 

10, 22 

Pennock & Sellers v. Dialogue, 27 U.S. (2 Pet.) 1 

(1829) ........................................................................................ 3 

Rosemont Enter. Inc. v. Random House, Inc., 

366 F.2d 303 (2d Cir. 1966), cert. denied, 385 U.S. 

1009 (1967) ............................................................................. 

16 

Schnapper v. Foley, 667 F.2d 102 (D.C. Cir. 1981), 

cert. denied, 445 U.S. 948 (1982) ....................................... 

6, 15 

Trade-Mark Cases, 100 U.S. 82 (1879) ................................ 

7, 12 

United States v. Lopez, 514 U.S. 549 (1995) ....................... 

9 

United Video v. FCC, 890 F.2d 1173 (D.C. Cir. 

1989) ................................................................................. 

3, 4, 22 

Wisniewski v. United States, 353 U.S. 901 (1957) .............. 

21 

Constitution and statutes: 

U.S. Const.: 

Art. I, § 8, Cl. 8 (Copyright Clause) ............................. 

passim 

Amend. I ............................................ 

3, 4, 5, 11, 19, 20, 21, 22 

Act of May 31, 1790, ch. 15, 1 Stat. 124 ................................. 

2, 15 

§ 1, 1 Stat. 124 ................................................................... 

2, 15 

§ 3, 1 Stat. 125 ....................................................................... 

15 

Act of Feb. 3, 1831, §§ 1-2, 4 Stat. 436-437 ........................... 

2 

Act of Mar. 4, 1909, § 24, 35 Stat. 1075-1088 ........................ 

2 

Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat. 

2541 (17 U.S.C. 101 et seq.) ................................................... 

2 

17 U.S.C. 302 ...................................................................... 

2 

17 U.S.C. 302(a) (1978) ..................................................... 

2 

17 U.S.C. 304 ...................................................................... 

2, 3 

Sonny Bono Copyright Term Extension Act, Pub. L. 

No. 105-298, 112 Stat. 2827 (1988) ................................. 

passim 

§ 102(b), 112 Stat. 2827 ..................................................... 

2, 3 

§ 102(d), 112 Stat. 2827 ..................................................... 2, 3 

V 

Miscellaneous: Page 

7 Cong. Deb. App. CXIX (1830) ............................................. 
17 

S. Rep. No. 315, 104th Cong., 2d Sess. (1996) ...................... 8 

In the Supreme Court of the United States 

No. 01-618 

ERIC ELDRED, ET AL., PETITIONERS 

v. 

JOHN D. ASHCROFT 

ON PETITION FOR A WRIT OF CERTIORARI 
TO THE UNITED STATES COURT OF APPEALS 
FOR THE DISTRICT OF COLUMBIA CIRCUIT 

BRIEF FOR THE RESPONDENT IN OPPOSITION 

OPINIONS BELOW 

The opinion of the court of appeals (Pet. App. 1a-23a) 
is reported at 239 F.2d 372. The opinion of the court of 
appeals (Pet. App. 24a-33a) on denial of rehearing and 
rehearing en banc is reported at 255 F.3d 849. The 
Memorandum and Order of the district court (Pet. App. 
34a-39a) is reported at 74 F. Supp. 2d 1. 

JURISDICTION 

The judgment of the court of appeals was entered on 
February 16, 2001, and a petition for rehearing was 
denied on July 13, 2001. The petition for a writ of cer- 
tiorari was filed on October 11, 2001. This Court’s juris- 
diction is invoked under 28 U.S.C. 1254(1). 

(1) 

2 

STATEMENT 

1. The Copyright Clause of the Constitution confers 
upon Congress the “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.” 
U.S. Const. Art. I, § 8, Cl. 8. Beginning in 1790, see Act 
of May 31, 1790, ch. 15, 1 Stat. 124, Congress has 
enacted a number of copyright statutes pursuant to 
that authority. The 1790 Copyright Act established a 
copyright term of 14 years and applied it both to newly 
created works and to subsisting works protected under 
the copyright laws of the various States. Act of May 31, 
1790, § 1. Congress extended the term of copyright 
protection for new and subsisting copyrighted works 
again in 1831 and 1909. Act of Feb. 3, 1831, §§ 1-3, 4 
Stat. 436-437; Act of Mar. 4, 1909, § 24, 35 Stat. 1075- 
1088. Currently, most copyright claims are governed 
by the Copyright Act of 1976, Pub. L. No. 94-553, 90 
Stat. 2541, codified as amended at 17 U.S.C. 101 et seq. 
As originally enacted, the Copyright Act of 1976 
accorded the exclusive right to publish and reproduce 
an original work to the author of that work during the 
author’s life plus 50 years. See 17 U.S.C. 302(a) (1978). 
In 1998, Congress enacted the Sonny Bono Copyright 
Term Extension Act (CTEA or Act), Pub. L. No. 105- 
298, 112 Stat. 2827, bringing United States copyright 
law into conformity with the copyright laws of the 
European Union. See Pet. App. 13a. Among other 
things, the CTEA extends the terms of copyrights for 
20 years. See CTEA, § 102(b) and (d), 112 Stat. 2827 
(amending 17 U.S.C. 302, 304). Thus, an additional term 
of 20 years is added to the duration of all existing 
copyrights (i.e., for all original works that, at the time of 

3 

the Act’s effective date, had not yet fallen into the 
public domain). CTEA § 102(d), 112 Stat. 2827 (amend- 
ing 17 U.S.C. 304). The Act also provides that any 
future copyrights will have a term of the life of the 
author plus 70 years. CTEA, § 102(b), 112 Stat. 2827 
(amending 17 U.S.C. 302). 

2. Petitioners brought this action in the United 
States District Court for the District of Columbia to 
challenge, among other things, the constitutionality of 
the CTEA’s 20-year extension of existing copyrights. 
Specifically, they alleged that the extension violates the 
First Amendment and the Copyright Clause of the Con- 
stitution. 

The parties filed cross-motions for judgment on the 
pleadings. By Memorandum and Order filed on October 
28, 1999 (Pet. App. 34a-39a), the district court granted 
respondent’s motion and denied petitioners’. The court 
first rejected petitioners’ First Amendment claim. 
“The District of Columbia Circuit,” the district court 
held, “has ruled definitively that there are no First 
Amendment rights to use the copyrighted works of 
others.” Id. at 37a (citing United Video, Inc. v. FCC, 
890 F.2d 1173, 1191 (D.C. Cir. 1989), and Harper & 
Row, Publishers, Inc. v. Nation Enterprs., 471 U.S. 
539, 556 (1985)). 

The court also held that Congress did not exceed its 
powers under the Copyright Clause of the Constitution 
by extending the terms of existing copyrights. The 
court stated that the duration requirement of that 
clause—which requires that copyrights persist only for 
“[l]imited [t]imes”—is “subject to discretion of Con- 
gress.” Pet. App. 37a (citing Pennock & Sellers v. 
Dialogue, 27 U.S. (2 Pet.) 1, 16-17 (1829)). Congress, 
the district court further held, “has authority to enact 
retrospective laws under the copyright clause.” Id. at 

4 

37a (citing McClurg v. Kingsland, 42 U.S. (1 How.) 202, 
206 (1843)).1 

3. Petitioners appealed, and the court of appeals 
affirmed. Pet. App. 1a-16a. The court unanimously 
rejected petitioners’ First Amendment claim, but one 
member of the panel dissented with respect to the claim 
that Congress had exceeded its powers under the 
Copyright Clause. 

a. On the First Amendment claim, the court of ap- 
peals first held that petitioners have standing to 
challenge the CTEA’s application both to subsisting 
copyrights and to future copyrights. Pet. App. 4a-5a. 
The court disagreed with the government’s contention 
that petitioners lack standing to raise the latter chal- 
lenge. Petitioners “benefit from works in the public 
domain and are deprived of that benefit so long as such 
works are under copyright,” the court stated. That 
alleged deprivation, the court of appeals continued, is 
threatened as much “for works not yet created as for 
extant works on which the copyrights are about to 
expire.” Id. at 5a. 

On the merits of the First Amendment claim, the 
court held that this Court’s decision in Harper & Row, 
Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 
(1985), and the D.C. Circuit’s decision in United Video, 
Inc. v. FCC, 890 F.2d 1173 (1989), “stand as insuperable 
bars to [petitioners’] first amendment theory.” Pet. 
App. 5a. Copyright, the court explained, merely gives 

1 The district court also rejected petitioners’ argument that the 
extension violates the “to Authors” term of the Copyright Clause, 
and their claim that it violates the public trust doctrine. 
Petitioners did not renew those two distinct legal arguments in the 
court of appeals; nor have they attempted to do so in their petition 
to this Court.… 

5 

the author an exclusive right in the form of expression; 
it does not give the author a monopoly on the idea or 
fact being expressed. See id. at 5a-6a. Accordingly, the 
court held, copyright laws do not infringe freedom of 
speech. Id. at 6a. Indeed, it continued, this Court had 
so recognized in Harper & Row. Pet. App. 6a (quoting 
471 U.S. at 556). 

The court of appeals rejected, as “wholly illusory,” 
petitioners’ attempt to distinguish Harper & Row and 
United Video. Pet. App. 7a. It is true, the court 
pointed out, that the litigants in those cases “demand- 
[ed] a right to use otherwise legitimately copyrighted 
material,” id. at 6a, whereas petitioners in this case 
bring a “First Amendment challenge[] to the consti- 
tutionality of the statute granting a [copy]right in the 
first instance.’ ” Ibid. The court of appeals concluded, 
however, that the purported distinction did not make a 
logical difference. The relevant question for First 
Amendment purposes is “whether the party has a first 
amendment interest in a copyrighted work.” Id. at 7a. 
Answering that question in the negative, the court 
concluded that petitioners “lack any cognizable first 
amendment right to exploit the copyrighted works of 
others.” Id. at 8a. 

b. The court of appeals also rejected petitioners’ 
claim that the CTEA, by extending the duration of 
already existing copyrights, exceeds Congress’s powers 
under the Copyright Clause. Petitioners had argued 
that Congress “cannot extend an extant copyright,” be- 
cause a pre-existing “copyrighted work already exists 
and therefore lacks originality.” Pet. App. 8a. The 
court responded by pointing out that a “work with a 
subsisting copyright has already satisfied the require- 
ment of originality, and need not do so anew for its 
copyright to persist.” Ibid. Petitioners, the court 

6 

further noted, “point to no case or commentary * * * 
that calls into question the distinction between a new 
grant of copyright—as to which originality is an issue— 
and the extension of an existing grant.” Id. at 9a. 

c. The court of appeals also rejected petitioners’ 
“contention that the CTEA violates the constitutional 
requirement that copyrights endure only for ‘limited 
Times.’ ” Pet. App. 10a. Petitioners argued, in effect, 
that increases in the duration of an already existing 
copyright could not be justified under the Copyright 
Clause, because such increases would not “promote the 
Progress of Science and useful Arts.” Petitioners’ idea 
was that “the phrase ‘limited Times’ should be inter- 
preted not literally but rather as reaching only as far 
as is justified by the preambular statement of 
purpose”—i.e., that “if ‘50 years are enough to promote 

. . . Progress,’ then a grant of 70 years is uncon- 
stitutional.” Ibid. 

That argument, the court of appeals held, was fore- 
closed by Schnapper v. Foley, 667 F.2d 102 (D.C. Cir. 
1981), cert. denied, 455 U.S. 948 (1982). In that case, 
the court of appeals “rejected the argument ‘that the 
introductory language of the Copyright Clause consti- 
tutes a limit on congressional power.’ ” 

Pet. App. 10a 
(quoting Schnapper, 667 F.2d at 112). In this case, the 
court observed, petitioners did not ask that Schnapper 
be overturned. Instead, petitioners had urged the 
court of appeals to circumvent Schnapper’s holding by 
interpreting the term “limited Times” to take its 
meaning (and incorporate temporal limits) from the 
preamble. The court rejected that argument as unper- 
suasive. “[O]ne cannot concede that the preamble ‘is 
not a substantive limit’ and yet maintain that it limits 
the permissible duration of a copyright more strictly 
than does the textual requirement that it be for a 

7 

‘limited Time.’ ” 
Id. at 10a-11a. Further, although 

petitioners relied on Feist Publications, Inc. v. Rural 
Telephone Service Co., 499 U.S. 340 (1991), and Trade- 
Mark Cases, 100 U.S. 82 (1879), the court of appeals 
concluded that neither of those cases requires that the 
phrase “limited Times” be read as taking its substance 
from the preamble’s statement of purpose. Instead, the 
court held, those cases turn on the meaning of the 
words “Authors” and “Inventions”—which imply an 
element of originality—and not on any independent 
effect of the Copyright Clause’s preamble. Pet. App. 
10a-11a. 

d. The court declined to entertain or adopt an argu- 
ment that had been raised solely by an amicus. Pet. 
App. 11a-12a. According to the amicus, Schnapper does 
not preclude courts from requiring that Copyright 
Clause legislation, viewed as a whole, promote science 
and the useful arts. Instead, the amicus argued, 
Schnapper merely bars courts from requiring that each 
case-specific application of the copyright power—the 
award and protection of copyrights in individual cases 
—promote science and the useful arts. Because that 
argument had been raised only by an amicus, and 
because it had not been adopted by any of the parties, 
the court concluded that it need not address it. Id. at 
11a-12a. The decision not to address amicus’s argu- 
ment, the court further held, was supported by two 
prudential considerations. First, federal courts gener- 
ally should not seek out constitutional issues not before 
them. Id. at 11a. Second, the court observed, the 
parties’ “conspicuous[]” failure to adopt amicus’s argu- 
ment had prevented the government from being 
“alerted to any need to argue this point.” Ibid. Be- 
cause the government in fact did not argue the point, 

8 

the court deemed it inappropriate to resolve the issue 
without the benefit of full adversary presentation. Ibid. 

The court also stated that, if it were required to 
address amicus’s legal argument, it might well reject it. 
Even if the court were to agree that the Copyright 
Clause’s preamble—“To promote the Progress of 
Science and useful Arts”—imposes a judicially cogniz- 
able limitation on Congress’s power, the court “might 
well hold that the application of the CTEA to subsisting 
copyrights is ‘plainly adapted’ and ‘appropriate’ to 
‘promot[ing] progress.’ ” Pet. App. 12a (citing Ladd v. 
Law & Techn. Press, 762 F.2d 809, 812 (9th Cir. 1985), 
cert. denied, 475 U.S. 1045 (1986)). The court observed: 
“Congress found that extending the duration of copy- 
rights on existing works would, among other things, 
give copyright holders an incentive to preserve older 
works, particularly motion pictures in need of restora- 
tion.” Ibid. (citing S. Rep. No. 315, 104th Cong. 2nd 
Sess. 12 (1996)). 

e. Finally, the court found that the CTEA’s consti- 
tutionality is reinforced by three further considera- 
tions. First, the CTEA “matches United States copy- 
rights to the terms of copyrights granted by the 
European Union.” Pet. App. 13a. “[I]n an era of multi- 
national publishers and instantaneous electronic trans- 
mission, harmonization in this regard has obvious 
practical benefits for the exploitation of copyrights.” 
Ibid. 

Second, the claim that Congress lacks authority to 
extend the term of copyrights in existing works is 
refuted by historical practice. The First Congress 
“made the Copyright Act of 1790 applicable to sub- 
sisting copyrights arising under the copyright laws of 
the several states.” Pet. App. 13a. The construction of 
the Constitution “ ‘by [those] contemporary with its 

9 

formation, many of whom were members of the con- 
vention which framed it, is of itself entitled to very 
great weight, and when it is remembered that the 
rights thus established have not been disputed [for this 
long], it is almost conclusive.’ ” Id. at 14a (quoting 
Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 
57 (1884)). Third, this Court had made it “plain” that 
Congress has the power “to amplify the terms of an 
existing patent.” Id. at 14a-15a (citing McClurg v. 
Kingsland, 42 U.S. (1 How.) 202, 206 (1843)). There is 
no reason, the court of appeals concluded, why Con- 
gress would lack similar power with respect to existing 
copyrights. Id. at 15a. 

f. Judge Sentelle dissented in part. Although he 
agreed that Congress has authority to extend the term 
of copyright protection for future works, he concluded 
that Congress had exceeded its power under the Copy- 
right Clause by extending the copyright term of exist- 
ing works. Pet. App. 16a-23a. He maintained that the 
“concept of ‘outer limits’ to enumerated powers applies 
not only to the Commerce Clause but to all the enumer- 
ated powers, including the Copyright Clause.” Id. at 
17a (quoting United States v. Lopez, 514 U.S. 549, 552 
(1995)). He stated that the Copyright Clause “is not an 
open grant of power to secure exclusive rights,” but 
rather “a grant of a power to promote progress,” by 
granting exclusive rights only for “limited times.” Id. 
at 18a. In his view, “[e]xtending existing copyrights is 
not promoting useful arts, nor is it securing exclusivity 
for a limited time.” Id. at 19a. 

Accepting the arguments of an amicus, Judge Sen- 
telle also expressed the view that Schnapper did not 
foreclose the court from looking to the language of the 
preamble to the Copyright Clause to determine the 
scope of the “limited Times” requirement. Pet. App. 

10 

20a. Instead, he read Schnapper as barring courts from 
requiring that each application of the Copyright Clause, 
in individual cases, actually have the effect of 
promoting science or art. Although the argument had 
not been raised by a party—it was raised only by an 
amicus—Judge Sentelle thought it proper for the court 
to consider the argument because it concerned an issue, 
the constitutionality of the CTEA, that was before the 
court. Id. at 21a-23a. 

4. Petitioners filed a petition for rehearing en banc, 
which the court denied. Pet. App. 27a. 

The panel majority issued an opinion on rehearing, 
reiterating its view that the contentions of petitioners’ 
amicus were not properly before it, Pet. App. 24a-27a, 
and that it would be “ ‘particularly inappropriate’ in this 
case to reach” those contentions, id. at 25a. The ma- 
jority stressed that petitioners had declined to adopt 
the position of its amicus. Under such circumstances, 
the court explained, it was proper to follow New Jersey 

v. New York, 523 U.S. 767, 781 n.3 (1998), and to refuse 
to address the argument. The majority also explained 
that its decision not to reach amicus’s argument was 
supported by the principle of constitutional avoidance. 
The amicus’s position “poses an additional consti- 
tutional question,” the court explained, and therefore is 
“subject to the ‘rule of avoidance.’ ” 

Pet. App. 26a 
(citing Ashwander v. Tennessee Valley Auth., 297 U.S. 
288, 346 (1936) (Brandeis, J., concurring)). Furthermore, 
the court continued, “because the plaintiffs-appellants 
did not take the same tack as the amicus, the 
Government did not on brief address the district court’s 
interpretation of ” Schnapper. Pet. App. 26a. 

Finally, the court stated that, “even if we considered 
the amicus’s position we would not reach a different 
result in this case.” Pet. App. 26a. The court explained 

11 

that, even if one assumed that “the preamble limits the 
power of Congress, the CTEA still passes muster under 
the ‘necessary and proper review’ applicable to the 
Congress’s exercise of a power enumerated in Article 

I.” Id. at 26a-27a (citing 239 F.3d at 378 (Pet. App. 
12a)). “Congress found that extending the duration of 
copyrights on existing works would, among other 
things, give copyright holders an incentive to preserve 
older works, particularly motion pictures in need of 
restoration.” Id. at 27a (citing 239 F.3d at 378 (Pet. 
App. 12a)).2 

ARGUMENT 

The decision of the court of appeals is correct and 
does not conflict with any decision of this Court or of 
any other court of appeals. Petitioners cite no decision 
of any court holding that Congress cannot, consistent 
with the Copyright Clause, enact legislation that ex- 
tends the term of existing copyrights. They cite no 
decision of any court striking down an extension of 
copyright terms on First Amendment grounds. And 
they cite no decision of any other court addressing, 
much less rejecting, the validity of the Copyright Term 
Extension Act of 1998 (CTEA), Pub. L. No. 105-298, 112 

2 Judge Sentelle (joined by Judge Tatel) filed a statement 
dissenting from the denial of rehearing en banc. Pet. App. 28a- 
33a. Judge Sentelle stated that the court’s “opinion in this case 
effectively eliminates any role for amicus curiae in the practice of 
this circuit, when it holds that an argument raised by an amicus 
may not be considered by the Court.” Id. at 28a. On the merits, 
Judge Sentelle reiterated his view that Congress lacks authority 
under the Copyright Clause to extend the copyright term for 
subsisting works. “Once a work is published,” he stated, “ex- 
tending the copyright term does absolutely nothing to induce 
further creative activity by the author.” Id. at 32a-33a. 

12 

Stat. 2827. Accordingly, further review is not war- 
ranted. 

1. Petitioners argue (Pet. 12-16) that the court of 
appeals’ decision, insofar as it upholds Congress’s 
power to extend the duration of existing copyrights, 
conflicts with decisions of this Court and with other 
courts of appeals. The asserted conflicts, however, do 
not exist. The issues on which petitioners identify 
conflicts are not implicated by this case. And the pri- 
mary issue on which petitioners claim conflict is largely 
academic in this case, because the court of appeals’ 
judgment is supported by an alternative holding. 

a. Petitioners first claim that the decision below is 
inconsistent with Graham v. John Deere Co., 383 U.S. 1 
(1966), Feist Publications, Inc. v. Rural Telephone 
Service Co., 499 U.S. 340 (1991), and Trade-Mark Cases, 
100 U.S. 82 (1879). None of those cases, however, ad- 
dresses Congress’s power to extend the term of an 
existing copyright. Nor do any of them address the 
constitutionality of the CTEA. 

Nonetheless, petitioners claim that Graham estab- 
lishes “that it would be beyond Congress’s constitu- 
tional power to grant a patent [or a copyright] to a 
work in the public domain.” Pet. 12. Even if Graham 
establishes that proposition, it has nothing to do with 
this case. Congress did not, by enacting the CTEA, 
reinstate copyright protection for works that had 
already entered the public domain. Instead, it ex- 
tended the copyright protection accorded to copy- 
righted works that had not yet entered the public 
domain. As the D.C. Circuit stated, “[h]ere we ask not 
whether any work is copyrightable—indeed, the rele- 
vant works are already copyrighted—but only whether 
a copyright may by statute be continued in force 
beyond the renewal term specified by law when the 

13 

copyright was first granted.” Pet. App. 9a. The court 
of appeals answered that question in the affirmative, 
and its answer is in no way inconsistent with Graham. 

Petitioners’ reliance upon Feist and Trade-Mark 
Cases is misplaced for the same reason. The principle 
of “originality” mandated by those decisions is not vio- 
lated here. In the CTEA, Congress merely extended 
the term of properly copyrighted “original” works— 
works that had already met the requirement of 
originality in qualifying for protection in the first in- 
stance. Thus, this is not a case in which Congress has 
sought to protect works that lack originality. It is a 
case in which Congress has extended the term of 
protection for works that are concededly original, and 
were accorded copyright protection in the first instance 
precisely because they are original. 

Unable to point to a conflict between the decision 
below and a holding of this Court, petitioners seem to 
argue that this Court’s cases must be read as recogniz- 
ing, sub silentio, that the preamble to the Copyright 
Clause—“To promote the Progress of Science and use- 
ful Arts”—creates a judicially manageable and enforce- 
able limitation on Congress’s copyright powers. That is 
true, they argue, because the preamble is the “only” 
possible source of the “originality” requirement this 
Court has recognized, and the only conceivable source 
of the asserted prohibition against removing works 
from the public domain. Pet. 12-13. A purported con- 
flict between a decision of a court of appeals and hypo- 
thetical sub silentio reasoning that petitioners attribute 
to this Court is not a sound basis for further review. 

Petitioners, in any event, are incorrect in claiming 
that the “originality” requirement and the alleged pro- 
hibition on Congress’s removal of works from the public 
domain necessarily stem from the Copyright Clause’s 

14 

preamble. To the extent the Copyright Clause itself 
imposes those limits, they would more logically stem 
from the body of the Copyright Clause, which author- 
izes Congress to grant to “Authors and Inventors” the 
“exclusive Right to their respective Writings and 
Discoveries.” U.S. Const. Art. I, § 8, Cl. 8 (emphases 
added). The use of the possessive form—“their” 
writings—together with the words “Authors” and 
“Inventors” might be thought to preclude copyright 
protection for works that are not original or that are in 
the public domain; in such cases, the individuals seeking 
protection might not be considered the “authors,” and 
the work might not be considered “theirs.” Cf. Frantz 
Mfg. Co. v. Phenix Mfg. Co., 457 F.2d 314, 327 n.48 (7th 
Cir. 1972) (“An author’s ‘Writing’ or an inventor’s ‘Dis- 
covery’ can, in the constitutional sense, only extend to 
that which is his own. It may not be broadened to 
include matters within the public domain.”). Because 
Congress in the CTEA extended copyright protection 
only for original works that are not already in the 
public domain, the origin or scope of the requirement 
that works be “original,” or of any prohibition on re- 
moving works from the public domain, is not at issue 
here. 

The question here is whether Congress can extend 
the duration of an already subsisting copyright. Noth- 
ing in this Court’s cases precludes Congress from 
enacting a statute that does so. Nor does any decision 
of this Court hold that the preamble to the Copyright 
Clause creates judicially manageable limits on Con- 
gress’s authority in that regard. And historical practice 
amply supports the sensible view that Congress may 
extend the term of existing copyrights when it extends 
the term of copyrights for future works. Pet. App. 13a- 
14a & n.1 (noting that Congress extended the terms of 

15 

subsisting copyrights in 1790, 1831, and 1909); p. 2, 
supra. Indeed, as the court of appeals explained—and 
petitioners nowhere dispute—the First Congress 
“made the Copyright Act of 1790 applicable to 
subsisting copyrights arising under the copyright laws 
of the several states.” Pet. App. 13a-14a (citing Act of 
May 31, 1790, §§ 1, 3, 1 Stat. 124-125). The construction 
of the Constitution by those “contemporary with its 
formation, many of whom were members of the con- 
vention which framed it, is of itself entitled to very 
great weight, and when it is remembered that the 
rights thus established have not been disputed [for this 
long], it is almost conclusive.’ ” Id. at 14a (quoting 
Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 
57 (1884)). Petitioners nowhere explain why that 
practice should not be considered conclusive here. 

b. Petitioners also argue (Pet. 14-15) that the court 
of appeals’ decision on the scope of Congress’s Copy- 
right Clause powers conflicts with authority from other 
circuits. That claim of conflict, which principally relies 
on Mitchell Brothers Film Group v. Cinema Adult 
Theater, 604 F.2d 852 (5th Cir. 1979), cert. denied, 445 
U.S. 917 (1980), is wholly without merit. 

As an initial matter, Mitchell Brothers did not in- 
volve a constitutional challenge to a statutory extension 
of the term of subsisting copyrights. Instead, it ad- 
dressed the unrelated question of whether an obscene 
work may be copyrighted. The court answered that 
question in the affirmative, declaring that copyright 
statutes need not promote “progress” in science and the 
arts in every application. Far from creating a conflict 
with the holding or rationale of Mitchell Brothers, the 
D.C. Circuit in Schnapper v. Foley, 667 F.2d 102 (D.C. 
Cir. 1981), cert. denied, 445 U.S. 948 (1982), specifically 
endorsed the Fifth Circuit’s statement of the proper 

16 

scope of judicial review in a Copyright Clause 
challenge—a “necessary and proper” standard that 
does “not require that each copyrighted work be shown 
to promote the useful arts * * *.” Id. at 112 (quoting 
Mitchell Bros., 604 F.2d at 860). In this case, the D.C. 
Circui merely followed its Schnapper ruling. Pet. App. 
10a. Petitioners do not explain how a decision following 
Schnapper, which follows Mitchell Brothers, can have 
created a conflict with Mitchell Brothers. 

Nor can one say that, under Mitchell Brothers, the 
Fifth Circuit would reach a different result from that 
reached by the D.C. Circuit here. To the contrary, far 
from contradicting the result reached by the court of 
appeals, Mitchell Brothers’ broad view of Congress’s 
powers under the Copyright Clause supports the D.C. 
Circuit’s decision. The Mitchell Brothers court indi- 
cated that “it is up to Congress to decide upon the 
means by which the constitutional command will best 
be effectuated,” and that Congress’s copyright enact- 
ments are at most subjected to review under “the 
lenient” necessary-and-proper standard. 604 F.2d at 
860. Applying that very standard to the CTEA, the 
court of appeals in this case concluded that the CTEA is 
necessary and proper to Congress’s exercise of its 
enumerated Copyright Clause powers. Pet. App. 26a- 
27a; pp. 18-19, infra. 

The remaining court of appeals’ decisions cited by 
petitioners are even further afield. Pet. 15-16. The 
cases invoked by petitioners do not involve consti- 
tutional challenges to copyright statutes, but rather 
issues such as interpretation of the scope of a claimed 
exclusive right under patent law (Frantz Mfg. Co. v. 
Phenix Mfg. Co., 457 F.2d 314 (7th Cir. 1972)); the scope 
of joint authorship under the Copyright Act (Erickson 

v. Trinity Theatre, 13 F.3d 1061 (7th Cir. 1994); Aalmu- 

17 

hammed v. Lee, 202 F.3d 1227 (9th Cir. 2000)); inter- 
pretation of the scope of “fair use” (Rosemont Enter. 
Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir. 
1966)); and the scope of a provision of the Copyright 
Act governing contributions to collective works (Green- 
berg v. National Geographic Soc’y, 244 F.3d 1267 (11th 
Cir.), cert. denied, 122 S. Ct. 347 (2001)). None of those 
statutory interpretation cases stands for the proposi- 
tion that the Constitution requires a rigorous judicial 
inquiry into whether a particular congressional enact- 
ment under the Copyright Clause promotes the useful 
arts. 

Likewise, those decisions—which involved neither a 
copyright extension statute nor the “limited Times” 
language of the Copyright Clause—neither compel nor 
support the conclusion that the Copyright Clause’s 
preamble controls the meaning of the “limited Times” 
provision. And they certainly do not indicate that those 
courts would reach a different result if presented with 
the challenge to the CTEA that petitioners raise here. 
In sum, those decisions do not conflict with the D.C. 
Circuit’s ruling, and provide no basis for further review 
of the decision below.3 

3 Petitioners also predicate the supposed need for review on 
the hyperbolic claim that the decision below will permit Congress 
to extend the duration of copyrights indefinitely, one enactment at 
a time, and thereby circumvent the limited duration requirement. 
Pet. 9. As the court of appeals recognized, however, that “clearly 
is not the situation” here. Pet. App. 13a. Instead, the “temporal 
thrust of the CTEA is a good deal more modest: The Act matches 
United States copyrights to the terms of copyrights granted by the 
European Union.” Ibid. That goal is unquestionably a permissible 
one. Indeed, that was precisely Congress’s goal when it extended 
the duration of copyrights in 1831. See 7 Cong. Deb. App. CXIX 
(1830) (1831 change “to place authors in this country more nearly 
on an equality with authors in other countries.”). 

18 

c. Petitioners, moreover, ignore the fact that the 
court of appeals’ alternative holding, which independ- 
ently supports the judgment below, would render this 
Court’s resolution of the alleged circuit conflicts wholly 
advisory. The court of appeals held that, even if it were 
to agree that the phrase “To promote Progress of 
Science and the useful Arts” in the preamble acts as a 
substantive limit on Congress’s authority under the 
Copyright Clause, it “would not reach a different result 
in this case.” Pet. App. 26a. See also id at 12a-13a. 
Instead, the court concluded, the CTEA would still be 
within Congress’s authority, because the CTEA is 
necessary and proper to Congress’s exercise of its 
enumerated Copyright Clause powers. Id. at 26a-27a. 
As the court of appeals explained, “Congress found that 
extending the duration of copyrights on existing works 
would, among other things, give copyright holders an 
incentive to preserve older works, particularly motion 
pictures in need of restoration. * * * Preserving 
access to works that would otherwise disappear—not 
enter the public domain but disappear—‘promotes 
Progress’ as surely as does stimulating the creation of 
new works.” Id. at 27a (some internal quotation marks 
omitted). See also id. at 12a-13a. Nothing in the Con- 
stitution, in any event, compels Congress to establish a 
dual-system of copyright under which works created 
the moment before Congress enacts copyright term 
extension legislation must have a shorter term than 
works created the moment after. Rather, Congress 
was entitled to establish a system of copyright that 
treats authors in a more even-handed fashion. 

In view of the court of appeals’ alternative holding, 
the issues on which petitioners claim conflict are largely 
academic. Even if this Court were to hold that the 
preamble to the Copyright Clause imposes judicially 

19 

manageable limits on the scope of Congress’s authority, 
as petitioners assert, the court of appeals’ conclusion 
that Congress did not exceed its authority—because 
the CTEA does promote progress in the useful 
arts—would still stand.4 Because this Court’s resolu- 
tion of the claimed conflicts would not alter the judg- 
ment below, further review would be inappropriate. 

2. Petitioners’ First Amendment claim fares no 
better. Petitioners initially contend (Pet. 18-22) that 
the D.C. Circuit’s decision rejecting their First Amend- 
ment claim improperly expands this Court’s decision in 
Harper & Row, Publishers, Inc. v. Nation Enterprises, 
471 U.S. 539 (1985). They are mistaken. In Harper & 
Row, the Court held that the First Amendment did not 
give a magazine the right to publish excerpts from 
President Ford’s copyrighted memoirs in advance of 
their authorized publication. Explaining its decision, 
the Court stated: 

[C]opyright’s idea/expression dichotomy “strike[s] a 
definitional balance between the First Amendment 
and the Copyright Act by permitting free communi- 
cation of facts while still protecting an author’s ex- 
pression.” 723 F.2d at 203. No author may copy- 
right his ideas or the facts he narrates. 17 U.S.C. 
§ 102(b). See, e.g., New York Times Co. v. United 
States, 403 U.S. 713, 726, n. (1971) (Brennan, J., con- 

4 This case, moreover, would be a particularly inappropriate 
vehicle for considering the correctness of that holding. Because 
the case was decided on cross-motions for judgment on the plead- 
ings, the parties have not developed an extensive record regarding 
the extent to which extending existing copyrights might reason- 
ably be thought to promote progress in the useful arts. The 
decision below, moreover, is the first to have considered that 
question. 

20 

curring) (Copyright laws are not restrictions on 
freedom of speech as copyright protects only form of 
expression and not the ideas expressed). 

471 U.S. at 556. Petitioners offer no reason why 
(absent viewpoint discrimination not present here) the 
idea/expression balance does not similarly prevent 
copyright from infringing their First Amendment 
rights. Nothing prevents them from using the ideas or 
facts contained in works protected by the CTEA. Nor 
do they explain why, to the extent anyone needs to use 
copyrighted expression, the “fair use” doctrine incor- 
porated into the Copyright Act does not fully vindicate 
such interests. Indeed, this Court has indicated that it 
may be permissible to copy protected expression ver- 
batim where “necessary adequately to convey the 
facts,” or where particular expression is “so integral to 
the idea expressed as to be inseparable from it,” Harper 
& Row, 471 U.S. at 563; and the “merger doctrine” 
similarly instructs that “[w]hen there is essentially only 
one way to express an idea, the idea and its expression 
are inseparable and copyright is no bar to copying that 
expression.” Yankee Candle Co., Inc. v. Bridgewater 
Candle Co., LLC, 259 F.3d 25, 35-36 (1st Cir. 2001); see 
also Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 168, 1082 
(9th Cir. 2000) (“Under the merger doctrine, courts will 
not protect a copyrighted work from infringement if the 
idea underlying the copyrighted work can be expressed 
in only one way, lest there be a monopoly on the 
underlying idea.”). 

Instead, petitioners seek to distinguish Harper & 
Row. They argue that Harper & Row applies only 
where a litigant demands a right to use otherwise le- 
gitimately copyrighted material, and not to a First 
Amendment “challenge of the statutes under which 

21 

copyrights are established.” Pet. 19-21. They cite no 
cases so holding, and any such distinction is illusory. As 
the court of appeals noted: 

The relevant question under the First Amendment 
—regardless whether it arises as a defense in a suit 
for copyright infringement or in an anticipatory 
challenge to a statute or regulation—is whether the 
party has a first amendment interest in a copy- 
righted work. The works to which the CTEA 
applies, and in which plaintiffs claim a first amend- 
ment interest, are by definition under copyright; 
that puts the works on the latter half of the “idea/ 
expression dichotomy” and makes them subject to 
fair use. This obviates further inquiry under the 
First Amendment. 

Pet. App. 7a. Indeed, if petitioners’ distinction were 
accepted, the defendants in Harper & Row could have 
prevailed if they had claimed that the Copyright Act 
was invalid insofar as it purported to create a copy- 
right in the work they appropriated, rather than claim- 
ing that they had a First Amendment right to use 
otherwise copyrighted work materials. Obviously, 
those alternative ways of framing the same First 
Amendment argument do not change the pertinent 
analysis and should not alter the proper result. In 
either case, the question is whether the litigant has a 
“cognizable First Amendment right to exploit” the 
work that Congress has purported to protect. Pet. 
App. 8a. Here, as in Harper & Row, petitioners may 
freely copy and use the facts and ideas contained in 
works subject to the CTEA, and may even copy original 
expression in such works to the extent permitted by 
the fair use doctrine and related principles. The con- 

22 

cerns and values reflected in the First Amendment are 
therefore fully satisfied. 

Petitioners assert that the basis of the court of 
appeals’ rejection of their First Amendment claim was 
that “there is no First Amendment right to trespass.” 
Pet. 21. Seizing upon the term “trespass,” they claim 
that “the D.C. Circuit’s own authority in the context of 
abortion protester cases shows” the court’s error. Ibid. 
Even if one were to assume that an intra-circuit conflict 
exists, it is well settled that such a conflict furnishes no 
basis for a grant of certiorari. See Davis v. United 
States, 417 U.S. 333, 340 (1974); Wisniewski v. United 
States, 353 U.S. 901, 902 (1957). In any event, peti- 
tioners simply miss the point. To accommodate First 
Amendment concerns, copyright statutes have long 
limited protection to the form of expression, and per- 
mitted others to use all facts and ideas contained in the 
copyrighted work. They similarly have permitted 
others to make “fair use” of even otherwise protected 
expression. It is the doctrine of fair use, as well as the 
doctrine “ ‘under which ideas are free but their parti- 
cular expression can be copyrighted,’ ” Pet. App. 6a, 
that ensures that copyright statutes remain largely 
immune from First Amendment challenges. Nothing in 
the abortion protest cases cited by petitioners under- 
mines that principle. 

Alternatively, petitioners argue that the D.C. Cir- 
cuit’s First Amendment holding conflicts with CBS 
Broadcasting, Inc. v. Echostar Communications Corp., 
265 F.3d 1193 (11th Cir. 2001). Pet. 22-24. The short 
answer is that the Eleventh Circuit, in rejecting a First 
Amendment challenge to a copyright statute in CBS 
Broadcasting, specifically endorsed the law of the D.C. 
Circuit in the copyright/First Amendment context, 
stating that “[t]here is ‘no first amendment right to 

23 

* * * make commercial use of the copyrighted works 
of others.’ ” 

CBS Broad., 265 F.3d at 1211 (quoting 
United Video, Inc. v. FCC, 890 F.2d 1173, 1190-91 (D.C. 
Cir. 1989)). Petitioners’ claim of conflict thus is without 
merit. 

3. Finally, in a footnote attached to the conclusion 
section of the petition, petitioners argue that amici have 
a right to inject additional arguments into a case, even 
if those arguments are not adopted by the parties. Pet. 
26 n.13. This purely procedural issue, presented in a 
footnote, does not independently warrant the Court’s 
review. Whether or not to consider additional argu- 
ments presented by amici, where those arguments are 
not adopted by the parties, is ordinarily entrusted to a 
court’s discretion; while courts may consider such 
arguments, they may also decline to address them, 
especially where, as here, prudential reasons support 
that result. See New Jersey v. New York, 523 U.S. 767, 
781 n.3 (1998) (declining to address an argument that 
the party has renounced, or renounced the benefit of ). 
Here, the court of appeals found strong prudential 
reasons that weighed against considering the argu- 
ments of amici, pp. 7-8, 10, supra, and any challenge to 
those case-specific reasons is likely to prove case- 
specific and of little continuing importance as well. 
Moreover, in light of the court of appeals’ alternative 
holding—that the court would reach the same result 
even if it considered and accepted the amicus’s legal 
theory (see Pet. App. 26a-27a)—any question con- 
cerning the scope of amicus participation is not properly 
presented in this case. 

24 

CONCLUSION 

The petition for a writ of certiorari should be denied. 

Respectfully submitted. 

THEODORE B. OLSON 

Solicitor General 

ROBERT D. MCCALLUM, JR. 

Assistant Attorney General 

WILLIAM KANTER 
JOHN S. KOPPEL 

Attorneys 

DECEMBER 2001