In 1994, however, the Uruguay round of multilateral trade negotiations produced the World Trade Organization and the Agreement on Trade-Related Aspects of Intellectual Property Rights. In conjuction, these two treaties provide for potent enforcement mechanisms against nations that failed to, inter alia, give retrospective application to the Berne Convention.
The United States joined the WTO and TRIPS. Congress then passed 17 U.S.C. § 104A, which provided retrospective copyright protection to foreign works created before Senate ratification of the Berne Convention. This had the effect of taking many previously unprotected works, including the Shostakovitch Symphonies and Peter and the Wolf, out of the public domain. As a result, a collection of "orchestra conductors, musicians, publishers, and others" sued in the District Court for the District of Colorado, where they alleged that Section 104A violated both the Copyright Clause and the First Amendment to the United States Constitution.
Justice Ginsburg wrote for the majority. Although the petitioner's first argument was couched in the guise of a Copyright Clause challenge, she recognized that the thrust of their complaint was, in fact, a Fifth Amendment challenge to a purportedly unconstitutional taking. In other words, Justice Ginsburg took the petitioner's argument to be that ownership rights should vest in the public once works fall into the public domain, and that Congress cannot restore copyright to authors without taking from that public. To counter this point, she cited a number of historical examples of such takings that had either gone without judicial scrutiny, or which had been held to pass constitutional muster.
Next, the majority rebutted the First Amendment argument by observing that Congress had not restricted petitioner's expression. Instead, Justice Ginsberg observed:
The question . . . is whether would-be users must pay for their desired use of the author's expression, or else limit their exploitation to "fair use" of that work. Prokofiev's Peter and the Wolf could once be performed free of charge; after [§ 104A] the right to perform it must be obtained in the marketplace. This is the same market-place, of course, that exists for the music of Prokofiev's U.S. contemporaries: works of Copland and Bernstein, for example, that enjoy copyright protection, but nevertheless appear regularly in the programs of U.S. concertgoers.Based on these principles, the majority declined to invalidate Section 104A.
Justices Breyer and Alito dissented. Their historical analysis reached back further than the majority's, to England's original copyright statute, and concluded that the framers were uncomfortable with the institution of monopolies of any kind, including copyright.
The dissent also raised the point that affording copyright to previously public domain foreign works imposes significant transactional costs to find the copyright holder and negotiate - often in a foreign language - for access to it. This creates a body of work that literally cannot be enjoyed at any price or, in economic terms, a deadweight loss.
