SUPREME COURT OF THE UNITED STATES
_________________
No. 01Ð618
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ERIC ELDRED, ET AL., PETITIONERS v. JOHN D. ASHCROFT, ATTORNEY
GENERAL
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE DISTRICT
OF COLUMBIA CIRCUIT
[January 15, 2003]
JUSTICE STEVENS, dissenting.
Writing for a unanimous Court in 1964, Justice Black stated that it is obvious
that a State could not “extend the life of a patent beyond its expiration
date,” Sears, Roebuck & Co. v. Stiffel Co., 376 U. S. 225, 231 (1964).1
As I shall explain, the reasons why a State may not extend the life of a patent
apply to Congress as well. If Congress may not expand the scope of a patent monopoly,
it also may not extend the life of a copyright beyond its expiration date. Accordingly,
insofar as the 1998 Sonny Bono Copyright Term Extension Act, 112 Stat. 2827,
purported to extend the life of unexpired copyrights, it is invalid. Because
the majority’s contrary conclusion rests on the mistaken premise that this
Court has virtually no role in reviewing
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1Justice Harlan wrote a brief concurrence, but did not disagree with this statement.
Justice Black’s statement echoed a portion of Attorney General Wirt’s
argument in Gibbons v. Ogden, 9 Wheat. 1, 171 (1824): “The law of Congress
declares, that all inventors of useful improve-ments throughout the United States,
shall be entitled to the exclusive right in their discoveries for fourteen years
only. The law of New-York declares, that this inventor shall be entitled to the
exclusive use of his discovery for thirty years, and as much longer as the State
shall permit. The law of Congress, by limiting the exclusive right to fourteen
years, in effect declares, that after the expiration of that time, the discovery
shall be the common right of the whole people of the United States.”
Cite as: 537 U. S. ____ (2003) 1 STEVENS, J., dissenting
congressional grants of monopoly privileges to authors, inventors and their successors,
I respectfully dissent.
I
The authority to issue copyrights stems from the same Clause in the Constitution
that created the patent power. It provides:
“
Congress shall have Power . . . To promote the Prog-ress of Science and useful
Arts, by securing for limited Times to Authors and Inventors the exclusive Right
to their respective Writings and Discoveries.” Art. I, §8,
cl. 8.
It is well settled that the Clause is “both a grant of power and a limitation” and
that Congress “may not over-reach the restraints imposed by the stated
constitutional purpose.” Graham v. John Deere Co. of Kansas City, 383 U.
S. 1, 5–6 (1966). As we have made clear in the patent context, that purpose
has two dimensions. Most obviously the grant of exclusive rights to their respective
writings and discoveries is intended to encourage the creativity of “Authors
and Inventors.” But the requirement that those exclusive grants be for “limited
Times” serves the ultimate purpose of promoting the “Progress of
Science and useful Arts” by guaranteeing that those innovations will enter
the public domain as soon as the period of exclusivity expires:
“
Once the patent issues, it is strictly construed, United States v. Masonite Corp.,
316 U. S. 265, 280 (1942), it cannot be used to secure any monopoly be-yond that
contained in the patent, Morton Salt Co. v. G. S. Suppiger Co., 314 U. S. 488,
492 (1942), . . . and especially relevant here, when the patent expires the monopoly
created by it expires, too, and the right to make the article—including
the right to make it in precisely the shape it carried when patented—passes
2 ELDRED v. ASHCROFT STEVENS, J., dissenting to the public. Kellogg Co. v. National
Biscuit Co., 305 U. S. 111, 120–122 (1938); Singer Mfg. Co. v. June Mfg.
Co., 163 U. S. 169, 185 (1896)." Sears, Roebuck & Co., 376 U. S., at
230. It is that ultimate purpose that explains why a patent may not issue unless
it discloses the invention in such detail that one skilled in the art may copy
it. See, e.g., Grant v. Raymond, 6 Pet. 218, 247 (1832) (Marshall, C. J.) ("The
third section [of the 1793 Act] requires, as preliminary to a patent, a correct
specification and description of the thing discovered. This is necessary in order
to give the public, after the privilege shall expire, the advantage for which
the privilege is allowed, and is the foundation of the power to issue the patent").
Complete disclosure as a precondition to the issuance of a patent is part of
the quid pro quo that justifies the limited monopoly for the inventor as consideration
for full and immediate access by the public when the limited time expires.2 Almost
two centuries ago the Court plainly stated that public access to inventions at
the earliest possible date was the essential purpose of the Clause: " While
one great object was, by holding out a reason- able reward to inventors, and
giving them an exclu- sive right to their inventions for a limited period, to
stimulate the efforts of genius; the main object was 'to promote the progress
of science and useful arts;' and
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2Attorney General Wirt made this precise point in his argument in Gibbons v.
Ogden, 9 Wheat., at 175: “The limitation is not for the advan-tage of the
inventor, but of society at large, which is to take the benefit of the invention
after the period of limitation has expired. The patentee pays a duty on his patent,
which is an effective source of revenue to the United States. It is virtually
a contract between each patentee and the people of the United States, by which
the time of exclusive and secure enjoyment is limited, and then the benefit of
the discovery results to the public.”
Cite as: 537 U. S. ____ (2003) 3 STEVENS, J., dissenting
this could be done best, by giving the public at large a right to make, construct,
use, and vend the thing in-vented, at as early a period as possible, having a
due regard to the rights of the inventor. If an inventor should be permitted
to hold back from the knowledge of the public the secrets of his invention; if
he should for a long period of years retain the monopoly, and make, and sell
his invention publicly, and thus gather the whole profits of it, relying upon
his superior skill and knowledge of the structure; and then, and then only, when
the danger of competition should force him to secure the exclusive right, he
should be allowed to take out a patent, and thus exclude the public from any
farther use than what should be derived under it during his fourteen years; it
would materially retard the progress of science and the useful arts, and give
a premium to those, who should be least prompt to communicate their discoveries.” Pennock
v. Dialogue, 2 Pet. 1, 18 (1829).
Pennock held that an inventor could not extend the period of patent protection
by postponing his application for the patent while exploiting the invention commercially.
As we recently explained, “implicit in the Patent Clause itself” is
the understanding “that free exploitation of ideas will be the rule, to
which the protection of a federal patent is the exception. Moreover, the ultimate
goal of the patent system is to bring new designs and technologies into the public
domain through disclosure.” Bonito Boats, Inc. v. Thunder Craft Boats,
Inc., 489 U. S. 141, 151 (1989).
The issuance of a patent is appropriately regarded as a quid pro quo—the
grant of a limited right for the inven-tor’s disclosure and subsequent
contribution to the public domain. See, e.g., Pfaff v. Wells Electronics, Inc.,
525 U. S. 55, 63 (1998) (“[T]he patent system represents a carefully crafted
bargain that encourages both the creation and the
4 ELDRED v. ASHCROFT STEVENS, J., dissenting public disclosure of new and useful
advances in technol- ogy, in return for an exclusive monopoly for a limited period
of time"). It would be manifestly unfair if, after issuing a patent, the
Government as a representative of the public sought to modify the bargain by
shortening the term of the patent in order to accelerate public access to the
invention. The fairness considerations that underlie the constitutional protections
against ex post facto laws and laws impairing the obligation of contracts would
presumably disable Congress from making such a retroac- tive change in the public's
bargain with an inventor with- out providing compensation for the taking. Those
same considerations should protect members of the public who make plans to exploit
an invention as soon as it enters the public domain from a retroactive modification
of the bar- gain that extends the term of the patent monopoly. As I discuss below,
the few historical exceptions to this rule do not undermine the constitutional
analysis. For quite plainly, the limitations "implicit in the Patent Clause
itself," 489 U. S., at 151, adequately explain why neither a State nor Congress
may "extend the life of a patent beyond its expiration date," Sears,
Roebuck & Co., 376 U. S., at 231.3 Neither the purpose of encouraging new
inventions nor the overriding interest in advancing progress by adding
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3The Court acknowledges that this proposition is “uncontroversial” today,
see ante, at 11, n. 6, but overlooks the fact that it was highly controversial
in the early 1800’s. See n. 11, infra. The Court assumes that the Sears
holding rested entirely on the pre-emptive effect of congressional statutes even
though the opinion itself, like the opinions in Graham v. John Deere Co. of Kansas
City, 383 U. S. 1 (1966), and Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,
489 U. S. 141 (1989), also relied on the pre-emptive effect of the constitutional
provision. That at least some of the Framers recognized that the Constitution
itself imposed a limitation even before Congress acted is demonstrated by Madison’s
letter, quoted in n. 6, infra.
Cite as: 537 U. S. ____ (2003) 5 STEVENS, J., dissenting
knowledge to the public domain is served by retroactively increasing the inventor’s
compensation for a completed invention and frustrating the legitimate expectations
of members of the public who want to make use of it in a free market. Because
those twin purposes provide the only avenue for congressional action under the
Copy-right/Patent Clause of the Constitution, any other action is manifestly
unconstitutional.
II
We have recognized that these twin purposes of encour-aging new works and adding
to the public domain apply to copyrights as well as patents. Thus, with regard
to copy-rights on motion pictures, we have clearly identified the overriding
interest in the "release to the public of the products of [the author's]
creative genius." United States v. Paramount Pictures, Inc., 334 U. S. 131,
158 (1948).4 And, as with patents, we have emphasized that the over- riding purpose
of providing a reward for authors' creative activity is to motivate that activity
and "to allow the pub- lic access to the products of their genius after
the limited period of exclusive control has expired." Sony Corp. of America
v. Universal City Studios, Inc., 464 U. S. 417, 429 (1984). Ex post facto extensions
of copyrights result in a gratuitous transfer of wealth from the public to authors,
publishers, and their successors in interest. Such retroac- tive extensions do
not even arguably serve either of the purposes of the Copyright/Patent Clause.
The reasons
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4“The copyright law, like the patent statutes, makes reward to the owner
a secondary consideration. In Fox Film Corp. v. Doyal, 286 U. S. 123, 127, Chief
Justice Hughes spoke as follows respecting the copy-right monopoly granted by
Congress, ‘The sole interest of the United States and the primary object
in conferring the monopoly lie in the general benefits derived by the public
from the labors of authors.’ It is said that reward to the author or artist
serves to induce release to the public of the products of his creative genius.” 334
U. S., at 158.
6 ELDRED v. ASHCROFT STEVENS, J., dissenting
why such extensions of the patent monopoly are unconsti-tutional apply to copyrights
as well.
Respondent, however, advances four arguments in support of the constitutionality
of such retroactive exten-sions: (1) the first Copyright Act enacted shortly
after the Constitution was ratified applied to works that had al-ready been produced;
(2) later Congresses have repeatedly authorized extensions of copyrights and
patents; (3) such extensions promote the useful arts by giving copyright holders
an incentive to preserve and restore certain valu-able motion pictures; and (4)
as a matter of equity, when-ever Congress provides a longer term as an incentive
to the creation of new works by authors, it should provide an equivalent reward
to the owners of all unexpired copy-rights. None of these arguments is persuasive.
III
Congress first enacted legislation under the Copy-right/Patent Clause in 1790
when it passed bills creating federal patent and copyright protection. Because
the content of that first legislation, the debate that accompa-nied it, and the
differences between the initial versions and the bills that ultimately passed
provide strong evi-dence of early Congresses’ understanding of the constitu-tional
limits of the Copyright/Patent Clause, I examine both the initial copyright and
patent statutes.
Congress first considered intellectual property statutes in its inaugural session
in 1789. The bill debated, House Resolution 10—“a bill to promote
the progress of science and useful arts, by securing to authors and inventors
the exclusive right to their respective writings and discover-ies,” 3 Documentary
History of the First Federal Congress of the United States of America, March
4, 1789–March 3, 1791, p. 94 (L. DePauw, C. Bickford, & L. Hauptman,
eds.,
Cite as: 537 U. S. ____ (2003) 7 STEVENS, J., dissenting
1977)—provided both copyright and patent protection for similar terms.5
The first Congress did not pass H. R. 10, though a similar version was reintroduced
in the second Congress in 1790. After minimal debate, however, the House of Representatives
began consideration of two separate bills, one covering patents and the other
copy-rights. Because, as the majority recognizes, “congressional practice
with respect to patents informs our inquiry,” ante, at 9, I consider the
history of both patent and copyright legislation.
The Patent Act
What eventually became the Patent Act of 1790 had its genesis in House Resolution
41, introduced on February 16, 1790. That resolution differed from H. R. 10 in
one important respect. Whereas H. R. 10 would have extended patent protection
to only those inventions that were "not before known or used," H. R.
41, by contrast, added the phrase "within the United States" to that
limitation and expressly authorized patent protection for "any person, who
shall after the passing of this act, first import into the United States . .
. any . . . device . . . not before used or known in the said States." 6
Documentary History, supra, at 1626–1632. This change would have authorized
patents of importation, providing United States patent protection for inventions
already in use elsewhere. This change, however, was short lived and was removed
by a floor amendment on March 5, 1789. Walterscheid 125. Though exact records
of the floor debate are lost, correspondence from House members indicate that
doubts about the con-
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5A copy of this bill specifically identified has not been found, though strong
support exists for considering a bill from that session as H. R.
10. See E. Walterscheid, To Promote the Progress of Useful Arts: American Patent
Law and Administration, 1798–1836, pp. 87–88 (1998) (hereinafter
Walterscheid). This bill is reprinted in 4 Documen-tary History 513–519.
8 ELDRED v. ASHCROFT STEVENS, J., dissenting
stitutionality of such a provision led to its removal. Rep-resentative Thomas
Fitzsimmons wrote to a leading in-dustrialist that day stating that the section “‘allowing
to Importers, was left out, the Constitutional power being Questionable.’” Id.,
at 126 (quoting Letter from Rep. Thomas Fitzsimmons to Tench Coxe (March 5, 1790)).
James Madison himself recognized this constitutional limitation on patents of
importation, flatly stating that the constitution “forbids patents for
that purpose.” 13 Papers of James Madison 128 (C. Hobson & R. Rutland,
eds. 1981) (reprinting letter to Tench Coxe (March, 28 1790)).6
The final version of the 1790 Patent Act, 1 Stat. 109, did not contain the geographic
qualifier and thus did not provide for patents of importation. This statutory
omis-sion, coupled with the contemporaneous statements by legislators, provides
strong evidence that Congress recog-nized significant limitations on their constitutional
authority under the Copyright/Patent Clause to extend protection to a class of
intellectual properties. This recog-nition of a categorical constitutional limitation
is funda-mentally at odds with the majority’s reading of Article I, §8
to provide essentially no limit on congressional action under the Clause. If
early congressional practice does,
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6“Your idea of appropriating a district of territory to the encourage-ment
of imported inventions is new and worthy of consideration. I can not but apprehend
however that the clause in the constitution which forbids patents for that purpose
will lie equally in the way of your expedient. Congress seem to be tied down
to the single mode of encour-aging inventions by granting the exclusive benefit
of them for a limited time, and therefore to have no more power to give a further
encourage-ment out of a fund of land than a fund of money. This fetter on the
National Legislature tho’ an unfortunate one, was a deliberate one. The
Latitude of authority now wished for was strongly urged and expressly rejected.” Madison’s
description of the Copyright/Patent Clause as a “fetter on the National
Legislature” is fully consistent with this Court’s opinion in Graham.
Cite as: 537 U. S. ____ (2003) 9 STEVENS, J., dissenting
indeed, inform our analysis, as it should, then the major-ity’s judicial
excision of these constitutional limits cannot be correct.
The Copyright Act
Congress also passed the first Copyright Act, 1 Stat. 124, in 1790. At that time
there were a number of maps, charts, and books that had already been printed,
some of which were copyrighted under state laws and some of which were arguably
entitled to perpetual protection under the common law. The federal statute applied
to those works as well as to new works. In some cases the application of the
new federal rule reduced the pre-existing protections, and in others it may have
in-creased the protection.7 What is significant is that the statute provided
a general rule creating new federal rights that supplanted the diverse state
rights that previously existed. It did not extend or attach to any of those pre-existing
state and common-law rights: “That congress, in passing the act of 1790,
did not legislate in reference to existing rights, appears clear.” Wheaton
v. Peters, 8 Pet. 591, 661 (1834); see also Fox Film Corp. v. Doyal, 286 U. S.
123, 127 (1932) (“As this Court has repeatedly said, the Congress did not
sanction an existing right but created a
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7Importantly, even this first Act required a quid pro quo in order to receive
federal copyright protection. In order to receive protection under the Act, the
author was first required to register the work: “That no person shall be
entitled to the benefit of this act, in cases where any map, chart, book or books,
hath or have been already printed and published, unless he shall first deposit,
and in all other cases, unless he shall before publication deposit a printed
copy of the title of such map, chart, book or books, in the clerk’s office
of the district court where the author or proprietor shall reside.” §3,
1 Stat. 124. This registration requirement in federal district court—a
requirement obviously not required under the various state laws protecting written
works— further illustrates that the 1790 Act created new rights, rather
than extending existing rights.
10 ELDRED v. ASHCROFT STEVENS, J., dissenting
new one”). Congress set in place a federal structure gov-erning certain
types of intellectual property for the new Republic. That Congress exercised
its unquestionable constitutional authority to create a new federal system securing
rights for authors and inventors in 1790 does not provide support for the proposition
that Congress can extend pre-existing federal protections retroactively.
Respondent places great weight on this first congres-sional action, arguing that
it proves that “Congress thus unquestionably understood that it had authority
to apply a new, more favorable copyright term to existing works.” Brief
for Respondent 12–13. That understanding, how-ever, is not relevant to
the question presented by this case—whether “Congress has the power
under the Copy-right Clause to extend retroactively the term of existing copyrights?” Brief
for Petitioners i.8 Precisely put, the question presented by this case does not
even implicate the 1790 Act, for that Act created, rather than extended, copyright
protection. That this law applied to works already in existence says nothing
about the First Con-gress’ conception of their power to extend this newly
cre-ated federal right.
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8Respondent’s reformulation of the questions presented by this case confuses
this basic distinction. We granted certiorari to consider the question: “Did
the D. C. Circuit err in holding that Congress has the power under the Copyright
Clause to extend retroactively the term of existing copyrights?” Respondent’s
reformulation of the first question presented—“Whether the 20-year
extension of the terms of all unex-pired copyrights . . . violates the Copyright
Clause of the Constitution insofar as it applies to works in existence when it
took effect”—signifi-cantly changes the substance of inquiry by changing
the focus from the federal statute at issue to irrelevant common-law protections.
Brief for Respondent I. Indeed, this reformulation violated this Court’s
Rule 24(1)(a), which states that “the brief [on the merits] may not raise
additional questions or change the substance of the questions already presented
in” the petition for certiorari.
Cite as: 537 U. S. ____ (2003) 11 STEVENS, J., dissenting
Moreover, members of Congress in 1790 were well aware of the distinction between
the creation of new copy-right regimes and the extension of existing copyrights.
The 1790 Act was patterned, in many ways, after the Statute of Anne enacted in
England in 1710. 8 Ann., c. 19; see Fred Fisher Music Co. v. M. Witmark & Sons,
318 U. S. 643, 647–648 (1943). The English statute, in addi-tion to providing
authors with copyrights on new works for a term of 14 years renewable for another
14-year term, also replaced the booksellers’ claimed perpetual rights in
existing works with a single 21-year term. In 1735, the booksellers proposed
an amendment that would have extended the terms of existing copyrights until
1756, but the amendment was defeated. Opponents of the amend-ment had argued
that if the bill were to pass, it would “in Effect be establishing a perpetual
Monopoly . . . only to increase the private Gain of the Booksellers . . . .”9
The authors of the federal statute that used the Statute of Anne as a model were
familiar with this history. Accord-ingly, this Court should be especially wary
of relying on Congress’ creation of a new system to support the proposi-tion
that Congress unquestionably understood that it had constitutional authority
to extend existing copyrights.
IV
Since the creation of federal patent and copyright pro- tection in 1790, Congress
has passed a variety of legisla- tion, both providing specific relief for individual
authors and inventors as well as changing the general statutes
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9“A LETTER to a Member of Parliament concerning the Bill now depending
. . . for making more effectual an Act in the 8th year of the Reign of Queen
Anne, entituled, An Act for the Encouragement of Learning by . . . Vesting the
Copies of Printed Books in the Authors or Purchasers.” Document reproduced
in Goldsmiths’—Kress Library of Economic Literature, Segment 1: Printed
Books Through 1800, Micro-film No. 7300 (reel 460).
12 ELDRED v. ASHCROFT STEVENS, J., dissenting
conferring patent and copyright privileges. Some of the changes did indeed, as
the majority describes, extend existing protections retroactively. Other changes,
how-ever, did not do so. A more complete and comprehensive look at the history
of congressional action under the Copyright/Patent Clause demonstrates that history,
in this case, does not provide the “‘volume of logic,’” ante,
at 9, necessary to sustain the Sonny Bono Act’s constitutionality.
Congress, aside from changing the process of applying for a patent in the 1793
Patent Act, did not significantly alter the basic patent and copyright systems
for the next 40 years. During this time, however, Congress did con-sider many
private bills. Respondent seeks support from “Congress’s historical
practice of using its Copyright and Patent Clause authority to extend the terms
of individual patents and copyrights.” Brief for Respondent 13. Care-fully
read, however, these private bills do not support respondent’s historical
gloss, but rather significantly undermine the historical claim.
The first example relied upon by respondent, the exten-sion of Oliver Evans’ patent
in 1808, ch. 8, 6 Stat. 70, demonstrates the pitfalls of relying on an incomplete
historical analysis. Evans, an inventor who had developed several improvements
in milling flour, received the third federal patent on January 7, 1791. See Federico,
Patent Trials of Oliver Evans, 27 J. Pat. Off. Soc. 586, 590 (1945). Under the
14-year term provided by the 1790 Patent Act, this patent was to expire on January
7, 1805. Claiming that 14 years had not provided him a sufficient time to realize
income from his invention and that the net profits were spent developing improvements
on the steam engine, Evans first sought an extension of his patent in December
1804. Id., at 598; 14 Annals of Congress 1002. Unsuccess-ful in 1804, he tried
again in 1805, and yet again in 1806, to persuade Congress to pass his private
bill. Undaunted,
Cite as: 537 U. S. ____ (2003) 13 STEVENS, J., dissenting
Evans tried one last time to revive his expired patent after receiving an adverse
judgment in an infringement action. See Evans v. Chambers, 8 F. Cas. 837 (No.
4,555) (CC Pa. 1807). This time, his effort at private legislation was successful
and Congress passed a bill extending his patent for 14 years. See An Act for
the relief of Oliver Evans, 6 Stat. 70. This legislation, passed January 21,
1808, re-stored a patent monopoly for an invention that had been in the public
domain for over four years. As such, this Act unquestionably exceeded Congress’ authority
under the Copyright/Patent Clause: “The Congress in the exercise of the
patent power may not overreach the restraints im-posed by the stated constitutional
purpose. . . . Congress may not authorize the issuance of patents whose effects
are to remove existent knowledge from the public domain, or to restrict free
access to materials already available.” Gra-ham, 383 U. S., at 5–6
(emphasis added).
This extension of patent protection to an expired patent was not an isolated
incident. Congress passed private bills either directly extending patents or
allowing other-wise untimely applicants to apply for patent extensions for approximately
75 patents between 1790 and 1875. Of these 75 patents, at least 56 had already
fallen into the public domain.10 The fact that this repeated practice was patently
unconstitutional completely undermines the majority’s reliance on this
history as “significant.” Ante, at 9.
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10See, e.g., ch. 74, 6 Stat. 458 (patent had expired for three months); ch. 113,
6 Stat. 467 (patent had expired for over two years); ch. 213, 6 Stat. 589 (patent
had expired for five months); ch. 158, 9 Stat. 734 (patent had expired for over
two years); ch. 72, 14 Stat. 621 (patent had expired nearly four years); ch.
175, 15 Stat. 461 (patent had expired for over two years); ch. 15, 16 Stat. 613
(patent had expired for six years); ch. 317, 16 Stat. 659 (patent had expired
for nearly four years); ch. 508, 17 Stat. 689 (patent had expired for over two
years).
14 ELDRED v. ASHCROFT STEVENS, J., dissenting
Copyright legislation has a similar history. The federal Copyright Act was first
amended in 1831. That amend-ment, like later amendments, not only authorized
a longer term for new works, but also extended the terms of unex-pired copyrights.
Respondent argues that that historical practice effectively establishes the constitutionality
of retroactive extensions of unexpired copyrights. Of course, the practice buttressess
the presumption of validity that attaches to every Act of Congress. But, as our
decision in INS v. Chadha, 462 U. S. 919 (1983), demonstrates, the fact that
Congress has repeatedly acted on a mistaken interpretation of the Constitution
does not qualify our duty to invalidate an unconstitutional practice when it
is finally challenged in an appropriate case. As Justice White pointed out in
his dissent in Chadha, that case sounded the “death knell for nearly 200
other statutory provisions” in which Congress had exercised a “legislative
veto.” Id., at 967. Regardless of the effect of unconstitu-tional enactments
of Congress, the scope of “‘the constitu-tional power of Congress
. . . is ultimately a judicial rather than a legislative question, and can be
settled finally only by this Court.’” United States v. Morrison,
529 U. S. 598, 614 (2000) (quoting Heart of Atlanta Motel, Inc. v. United States,
379 U. S. 241, 273 (1964) (Black, J., concurring)). For, as this Court has long
recognized, “[i]t is obviously correct that no one acquires a vested or
protected right in violation of the Constitution by long use, even when that
span of time cov-ers our entire national existence.” Walz v. Tax Comm’n
of City of New York, 397 U. S. 664, 678 (1970).
It would be particularly unwise to attach constitutional significance to the
1831 amendment because of the very different legal landscape against which it
was enacted. Congress based its authority to pass the amendment on grounds shortly
thereafter declared improper by the Court. The Judiciary Committee Report prepared
for the House of Representatives asserted that “an author has an
Cite as: 537 U. S. ____ (2003) 15 STEVENS, J., dissenting
exclusive and perpetual right, in preference to any other, to the fruits of his
labor.” 7 Gales & Seaton, Register of Debates in Congress cxx (1831).
The floor debate echoed this same sentiment. See, e.g., id., at 423 (statement
of Mr. Verplanck (rejecting the idea that copyright involved “an implied
contract existing between an author and the public” for “[t]here
was no contract; the work of an author was the result of his own labor” and
copyright was “merely a legal provision for the protection of a natural
right”)). This sweat-of-the-brow view of copyright, however, was emphatically
rejected by this Court in 1834 in Wheaton v. Peters, 8 Pet., at 661 (“Congress,
then, by this act, instead of sanctioning an existing right, as contended for,
created it”). No presumption of validity should attach to a statu-tory
enactment that relied on a shortly thereafter discred-ited interpretation of
the basis for congressional power.11
In 1861, Congress amended the term of patents, from a 14-year term plus opportunity
for 7-year extension to a flat 17 years with no extension permitted. Act of Mar.
2, 1861, ch. 88, §16, 12 Stat. 249. This change was not retro-active, but
rather only applied to “all patents hereafter granted.” Ibid. To
be sure, Congress, at many times in its history, has retroactively extended the
terms of existing
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11In the period before our decision in Wheaton, the pre-emptive effect of the
Patent/Copyright Clause was also a matter of serious debate within the legal
profession. Indeed, in their argument in this Court in Gibbons v. Ogden, 9 Wheat.,
at 44–61, 141–157, the defenders of New York’s grant of a 30-year
monopoly on the passenger trade between New Jersey and Manhattan argued that
the Clause actually should be interpreted as confirming the State’s authority
to grant monopoly privileges that supplemented any federal grant. That argument
is, of course, flatly inconsistent with our recent unanimous decision in Bonito
Boats v. Thundercraft Boats, Inc., 489 U. S 141 (1989). Although Attor-ney General
Wirt had urged the Court to endorse our present interpre-tation of the Clause,
its implicit limitations were unsettled when the 1831 Copyright Act was passed.
16 ELDRED v. ASHCROFT STEVENS, J., dissenting
copyrights and patents. This history, however, reveals a much more heterogeneous
practice than respondent con-tends. It is replete with actions that were unquestionably
unconstitutional. Though relevant, the history is not dispositive of the constitutionality
of Sonny Bono Act.
The general presumption that historic practice illumi-nates the constitutionality
of congressional action is not controlling in this case. That presumption is
strongest when the earliest acts of Congress are considered, for the overlap
of identity between those who created the Consti-tution and those who first constituted
Congress provides “contemporaneous and weighty evidence” of the Constitu-tion’s “true
meaning.” Wisconsin v. Pelican Ins. Co., 127 U. S. 265, 297 (1888). But
that strong presumption does not attach to congressional action in 1831, because
no member of the 1831 Congress had been a delegate to the framing convention
44 years earlier.
Moreover, judicial opinions relied upon by the majority interpreting early legislative
enactments have either been implicitly overruled or do not support the proposition
claimed. Graham flatly contradicts the cases relied on by the majority and respondent
for support that “renewed or extended terms were upheld in the early days.” Ante,
at 10.12 Evans v. Jordan, 8 F. Cas. 872, 874 (No. 4,564) (CC
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12 It is true, as the majority points out, ante at 11, n. 5, that Graham did
not expressly overrule those earlier cases because Graham did not address the
issue whether Congress could revive expired patents. That observation does not
even arguably justify reliance on a set of old circuit court cases to support
a proposition that is inconsistent with our present understanding of the limits
imposed by the Copyright/Patent Clause. After all, a unanimous Court recently
endorsed the precise analysis that the majority now seeks to characterize as “wishful
think-ing.” Ante, at 11, n. 5. See Bonito Boats, 489 U. S., at 146 (“Congress
may not create patent monopolies of unlimited duration, nor may it ‘authorize
the issuance of patents whose effects are to remove existent knowledge from the
public domain, or to restrict free access to materials
Cite as: 537 U. S. ____ (2003) 17 STEVENS, J., dissenting
Va. 1813) (Marshall, J.); Evans v. Robinson, 8 F. Cas. 886, 888 (No. 4,571) (CC
Md. 1813); and Blanchard v. Sprague, 3 F. Cas. 648, 650 (No. 1,518) (CC Mass.
1839) (Story, J.) all held that private bills passed by Congress extending previously
expired patents rights were valid. Evans v. Jordan and Evans v. Robinson both
considered Oliver Evans’ private bill discussed above while Blanchard in-volved
ch. 213, 6 Stat. 589, which extended Thomas Blan-chard’s patent after it
had been in the public domain for five months. Irrespective of what circuit courts
held “in the early days,” ante, at 10, such holdings have been implicitly
overruled by Graham and, therefore, provide no support for respondent in the
present constitutional inquiry.
The majority’s reliance on the other patent case it cites is similarly
misplaced. Contrary to the suggestion in the Court’s opinion, McClurg v.
Kingsland, 1 How. 202 (1843), did not involve the “legislative expansion” of
an existing patent. Ante, at 10–11. The question in that case was whether
the former employer of the inventor, one James Harley, could be held liable as
an infringer for continuing to use the process that Harley had invented in 1834
when he was in its employ. The Court first held that the employer’s use
of the process before the patent issued was not a public use that would invalidate
the patent, even if it might have had that effect prior to the amendment of the
patent statute in 1836. 1 How., at 206–208. The Court then disposed of
the case on the ground that a statute enacted in 1839 pro-tected the alleged
infringer’s right to continue to use the process after the patent issued.
Id., at 209–211. Our opin-ion said nothing about the power of Congress
to extend the life of an issued patent. It did note that Congress has ple-nary
power to legislate on the subject of patents provided
——————
already available’” (quoting Graham, 383 U. S., at 6 )).
18 ELDRED v. ASHCROFT STEVENS, J., dissenting
“
that they do not take away the rights of property in exist-ing patents.” Id.,
at 206. The fact that Congress cannot change the bargain between the public and
the patentee in a way that disadvantages the patentee is, of course, fully consistent
with the view that it cannot enlarge the patent monopoly to the detriment of
the public after a patent has issued.
The history of retroactive extensions of existing and expired copyrights and
patents, though relevant, is not conclusive of the constitutionality of the Sonny
Bono Act. The fact that the Court has not previously passed upon the constitutionality
of retroactive copyright extensions does not insulate the present extension from
constitutional challenge.
V
Respondent also argues that the Act promotes the useful arts by providing incentives
to restore old movies. For at least three reasons, the interest in preserving
perishable copies of old copyrighted films does not justify a wholesale extension
of existing copyrights. First, such restoration and preservation will not even
arguably promote any new works by authors or inventors. And, of course, any origi-nal
expression in the restoration and preservation of movies will receive new copyright
protection.13 Second,
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13Indeed, the Lodging of the Motion Picture Association of America, Inc., as
Amicus Curiae illustrates the significant creative work involved in releasing
these classics. The Casablanca Digital Video Disc (DVD) contains a “documentary
You Must Remember This, hosted by Lauren Bacall and featuring recently unearthed
outtakes” and an “[a]ll-new introduction by Lauren Bacall.” Disc
cover text. Similarly, the Citizen Kane DVD includes “[t]wo feature-length
audio commentaries: one by film critic Roger Ebert and the other by director/Welles
biographer Peter Bogdanovich” and a “gallery of storyboards, rare
photos, alternate ad campaigns, studio correspondence, call sheets and other
memora-bilia” in addition to a 2-hour documentary. Disc cover text.
Cite as: 537 U. S. ____ (2003) 19 STEVENS, J., dissenting
however strong the justification for preserving such works may be, that justification
applies equally to works whose copyrights have already expired. Yet no one seriously
contends that the Copyright/Patent Clause would author-ize the grant of monopoly
privileges for works already in the public domain solely to encourage their restoration.
Finally, even if this concern with aging movies would permit congressional protection,
the remedy offered—a blanket extension of all copyrights—simply bears
no rela-tionship to the alleged harm.
VI
Finally, respondent relies on concerns of equity to justify the retroactive extension.
If Congress concludes that a longer period of exclusivity is necessary in order
to provide an adequate incentive to authors to produce new works, respondent
seems to believe that simple fairness requires that the same lengthened period
be provided to authors whose works have already been completed and copy-righted.
This is a classic non sequitur. The reason for increasing the inducement to create
something new simply does not apply to an already-created work. To the con-trary,
the equity argument actually provides strong sup-port for petitioners. Members
of the public were entitled to rely on a promised access to copyrighted or patented
works at the expiration of the terms specified when the exclusive privileges
were granted. On the other hand, authors will receive the full benefit of the
exclusive terms that were promised as an inducement to their creativity, and
have no equitable claim to increased compensation for doing nothing more.
One must indulge in two untenable assumptions to find support in the equitable
argument offered by respondent— that the public interest in free access
to copyrighted works is entirely worthless and that authors, as a class, should
receive a windfall solely based on completed creative
20 ELDRED v. ASHCROFT STEVENS, J., dissenting
activity. Indeed, Congress has apparently indulged in those assumptions for under
the series of extensions to copyrights, only one year’s worth of creative
work—that copyrighted in 1923—has fallen into the public domain during
the last 80 years. But as our cases repeatedly and consistently emphasize, ultimate
public access is the overriding purpose of the constitutional provision. See,
e.g., Sony Corp., 464 U. S., at 429. Ex post facto extensions of existing copyrights,
unsupported by any consideration of the public interest, frustrate the central
purpose of the Clause.
VII
The express grant of a perpetual copyright would un-questionably violate the
textual requirement that the authors’ exclusive rights be only “for
limited Times.” Whether the extraordinary length of the grants authorized
by the 1998 Act are invalid because they are the functional equivalent of perpetual
copyrights is a question that need not be answered in this case because the question
pre-sented by the certiorari petition merely challenges Con-gress’ power
to extend retroactively the terms of existing copyrights. Accordingly, there
is no need to determine whether the deference that is normally given to congres-sional
policy judgments may save from judicial review its decision respecting the appropriate
length of the term.14 It
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14Similarly, the validity of earlier retroactive extensions of copyright protection
is not at issue in this case. To decide the question now presented, we need not
consider whether the reliance and expectation interests that have been established
by prior extensions passed years ago would alter the result. Cf. Heckler v. Mathews,
465 U. S. 728, 746 (1984) (“We have recognized, in a number of contexts,
the legitimacy of protecting reasonable reliance on prior law even when that
requires allowing an unconstitutional statute to remain in effect for a limited
period of time”). Those interests are not at issue now, because the act
under review in this case was passed only four years ago and has been
Cite as: 537 U. S. ____ (2003) 21 STEVENS, J., dissenting
is important to note, however, that a categorical rule prohibiting retroactive
extensions would effectively pre-clude perpetual copyrights. More importantly,
as the House of Lords recognized when it refused to amend the Statute of Anne
in 1735, unless the Clause is construed to embody such a categorical rule, Congress
may extend existing monopoly privileges ad infinitum under the ma-jority’s
analysis.
By failing to protect the public interest in free access to the products of inventive
and artistic genius—indeed, by virtually ignoring the central purpose of
the Copy-right/Patent Clause—the Court has quitclaimed to Con-gress its
principal responsibility in this area of the law. Fairly read, the Court has
stated that Congress’ actions under the Copyright/Patent Clause are, for
all intents and purposes, judicially unreviewable. That result cannot be squared
with the basic tenets of our constitutional struc-ture. It is not hyperbole to
recall the trenchant words of Chief Justice John Marshall: “It is emphatically
the prov-ince and duty of the judicial department to say what the law is.” Marbury
v. Madison, 1 Cranch 137, 177 (1803). We should discharge that responsibility
as we did in Chadha.
I respectfully dissent.
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under challenge in court since shortly after its enactment.
22 ELDRED v. ASHCROFT STEVENS, J., dissenting