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Return of the Undead: Golan v. Holder and the Public Domain

By Jonathan Moskin

A recurring issue in intellectual property law is the possibility of establishing rights in subject matter from the public domain and drawing the boundaries between what is public and private. In one guise, this issue is now before the Supreme Court in Assoc. for Molecular Pathology v. Myriad Genetics, Inc., No. 12-398, cert. granted, Nov. 30, 2012) (patent eligibility of isolated DNA). Earlier this year the issue arose in another guise in Golan v. Holder, 132 S.Ct. 873 (2012), which upheld the constitutionality of the Uruguay Round Agreements Act (or, informally, Copyright Restoration Act), granting U.S. copyright protection to certain works that had passed into the public domain in the United States, but which were still protected in their country of origin. In doing so, however, the Court construed the scope and significance of the public domain in a manner at odds with prior Supreme Court jurisprudence and in a manner that could have lasting significance for maintenance of trademark rights in subject matter within the scope of patent or copyright.

In Golan, various orchestra conductors, musicians, publishers, and others who had enjoyed unfettered access to certain such works in the public domain filed suit, objecting that Congress, in enacting the Copyright Restoration Act, exceeded its authority under the Copyright and Patent Clause and under the First Amendment. The Copyright Restoration Act restored rights in works that passed into the public domain for any of three basic reasons: the United States did not protect works from the country of origin at the time of first publication abroad; the United States did not protect sound recordings fixed before 1972; or the author failed to comply with U.S. statutory formalities. When the United States joined Berne in 1989, it did not protect such foreign works that had fallen into the public domain here. In 1994, however, TRIPS required implementation of Berne's first 21 articles, including protection of works of other member states where copyright had not expired in the country of origin.

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