The Constitutionality of GATT Restoration

Yesterday, the DC Circuit affirmed the district court's decision in Luck's Music Library, Inc. v. Gonzalez. The district court had upheld the constitutionality of Section 514 of the 1994 Uruguay Round Agreements Act; that is, 17 USC 104A. The DC Circuit's action follows on the heels of a similar decision by Chief Judge Babcock of the District of Colorado on April 20, 2005 in Golan v. Gonzalez.

This post will not attempt to convince anyone of the merits of the dispute over the constitutionality of the GATT restoration: the lines are too well drawn and hashed over in litigation, articles, and blogs. I shall merely supply some background as a participant in the drafting of the provision. I previously gave some of that background in my posting on bootlegs.

The origins of GATT restoration are found in the decision by Congress in 1988, when passing the Berne implementing legislation, not to provide, as Article 18(1) of that Convention requires, protection for "all works which, at the moment of its coming into force, have not yet fallen into the public domain in the country of origin through the expiry of the term of protection." This refers, in our case, to retroactive protection solely to the works of other Berne members. Berne, after all, is a law for foreigners; Berne doesn't care how a country treats works of domestic origin.

The purpose of Article 18(1) is straightforward: if a country has been outside the club (like the U.S. had been), when it joins the club, it has to provide, retroactively, protection to the works of existing club members (that is, all Berne members other than the U.S. itself). This requirement ensures that those who have remained outside the club don't benefit from having stayed outside. Article 18 benefits U.S. copyright owners when other countries join Berne after our adherence (March 1, 1989) and those countries haven't previously protected U.S. works.

The decision of Congress in 1988 not to amend our law to comply with Article 18(1) was made in the face of a requirement that when a country joins Berne, its laws must comport with the treaty's requirements. This makes sense: a country shouldn't be able to join a treaty, get the benefits that the treaty confers for your own authors, but not provide those benefits to the works of other countries' authors. This is, though, exactly what the U.S. did in 1988. Our only excuse for not protecting foreign works retroactively as Article 18(1) requires is that doing so posed "difficult issues." Well, so what?

The chickens came home to roost in the 1994 GATT Uruguay Round Agreements, when the U.S. wanted Berne standards incorporated into the TRIPS portion of those agreements. And the real kicker was the ability to haul miscreants before a WTO panel which could, in turn, order cross-sector penalties (as later happened with the 1998 amendment to 17 USC sec. 110(5)). In 1994, the United States Trade Representative's negotiators told me (as copyright counsel to the House IP subcommittee) and the subcommittee's chief counsel (Hayden Gregory) that if the GATT implementing legislation did not include a provision complying, at long last with Article 18(1), the European Union had indicated the first WTO panel convened would be over that issue. We believed them, and properly so. But even aside from this, I wanted to include a retroactive provision in GATT because I thought that we were wrong to have joined Berne on the sly and, therefore, that we had an obligation to rectify the mistake made in 1988. I still believe that: if Article 18(1) was too big a pill to swallow, we shouldn't have joined Berne.

These then were the reasons for the inclusion of current 17 USC 104A. (There had been a 104A in the NAFTA Agreement, but limited to Mexico and Canada; that provision was repealed by the GATT legislation). Congress was quite aware of the constitutional issues raised by retroactivity and, as noted in the bootleg posting, the IP subcommittees held a joint hearing at which the issues were fully explored. We attempted to take criticisms raised at the hearing into account (including those of Eugene Volokh) in the "reliance party" provisions.

I did not believe that the legislation provided a direct incentive for the creation of new works, nor that, divorced from the Berne obligation, restoration represented good policy. But honesty in treaty adherence is good policy, and retroactive protection for U.S. works overseas is of benefit to both U.S. copyright owners and to the system as a whole. I thought those two objectives sufficient, from a policy and constitutional standpoint. And I say this as someone who believes, more fervently than even Larry Lessig, that the "Promotion of the Progress of Science" language in Article I, section 8, clause 8 is a real substantive limitation on Congress's power. But I also believe that one must look to the system as a whole to see whether there has been a benefit provided by legislation, and in the case of GATT restoration, I answer that question affirmatively.

I respect that others disagree, but I would add that any disagreement over GATT should be divorced from term extension: term extension was four years off, and to Hayden's and my credit, when we were approached about term extension in 1994, we rejected it out-of-hand. I thought then, and still think, term extension was very bad policy. The Supreme Court, I believe, also regarded term extension as dubious policy, although a majority thought it passed constitutional muster.

This is not to say that one cannot disagree with both GATT and term extension: I only ask that two issues which are very different, temporally, substantively, and policy-wise, should be considered separately.