No.  01-618 

                                  IN THE 
		  Supreme Court of the United States
 
                           ERIC ELDRED, et al.,  
                                                               
                                                    Petitioners, 
                                      
                                    v. 
                                      
                           JOHN D. ASHCROFT,  
               In his official capacity as Attorney General,  
                                      
                                                    Respondent. 
                                      
                 On Petition for Writ of Certiorari to the  
United States Court of Appeals for the District of Columbia Circuit 
                                            
                     BRIEF OF AMICI CURIAE 
     EAGLE FORUM EDUCATION & LEGAL DEFENSE FUND 
                    AND THE CATO INSTITUTE 
                  IN SUPPORT OF PETITIONERS 
                                            ERIK S. JAFFE 
                                             Counsel of Record 
                                          ERIK S. JAFFE, P.C. 
                                          5101 34th Street, N.W. 
                                          Washington, D.C.  20008 
                                          (202) 237-8165  
                                           Counsel for Amici Curiae 
 



       

                            TABLE OF CONTENTS 
                                                                                       Pages 
                                                                                                 
TABLE OF CONTENTS......................................................... i 
TABLE OF AUTHORITIES..................................................ii 
INTEREST OF AMICI CURIAE........................................... 1 
SUMMARY OF ARGUMENT.............................................. 2 
ARGUMENT.......................................................................... 4 
     I. THE  DECISION  BELOW  IS IN THE MINORITY OF A 
           6-4  CIRCUIT  SPLIT  REGARDING THE ROLE OF 
           AMICI. ............................................................................ 4 
     II. RESOLVING THE CIRCUIT  SPLIT  REGARDING THE 
           ROLE OF AMICI  IS  IMPORTANT TO THE PROPER 
           ADMINISTRATION OF THE JUDICIAL  SYSTEM AND 
           THE FEDERAL RULES OF APPELLATE PROCEDURE. ........ 6 
     III. THE  FIRST  AMENDMENT  CONFLICT  SHOULD  BE 
           RESOLVED  PROMPTLY  DUE TO THE NATIONWIDE 
           CHILL  CREATED BY THE CTEA AND THE 
           DECISION BELOW. ....................................................... 11 
     IV. THE  COPYRIGHT  CLAUSE  LIMITS  CONGRESS' 
           POWER TO "PROMOT[ING] THE PROGRESS OF 
           SCIENCE.".................................................................... 15 
CONCLUSION..................................................................... 18 
 



                                             ii 

                      TABLE OF AUTHORITIES 
                                                                                   Pages 
    Cases 
Bridges v. City of Bossier, 92 F.3d 329 (CA5 1996), 
   cert. denied, 519 U.S. 1093 (1997)..................................... 5 
CBS Broadcasting, Inc. v. EchoStar 
   Communications Corp., 265 F.3d 1193 (CA11 
   2001)................................................................................. 11 
Corrosion Proof Fittings v. EPA, 947 F.2d 1201 
   (CA5 1991) ......................................................................... 5 
Florida Prepaid Postsecondary Educ. Expense Bd. 
   v. College Sav. Bank, 527 U.S. 627 (1999) ...................... 13 
Florida v. J.L., 529 U.S. 266 (2000)....................................... 9 
Graham v. John Deere Co., 383 U.S. 1 (1966) .............. 15, 16 
Gulf Power Co. v. United States, 187 F.3d 1324 
   (CA11 1999) ....................................................................... 5 
Harper & Row Publishers, Inc. v. Nation Enters., 
   471 U.S. 539 (1985).................................................... 11, 12 
Mapp v. Ohio, 367 U.S. 643 (1961) ....................................... 9 
Massachusetts Food Ass'n v. Massachusetts 
   Alcoholic Beverages Control Comm'n, 197 F.3d 
   560 (CA1 1999), cert. denied, 529 U.S. 1105 
   (2000).................................................................................. 4 
Montana v. Egelhoff, 518 U.S. 37 (1996)............................... 9 
National Comm'n on Egg Nutrition v. FTC, 570 
   F.2d 157 (CA7 1977), cert. denied, 439 U.S. 821 
   (1978).................................................................................. 5 
New Castle County v. National Union Fire Ins. Co., 
   243 F.3d 744 (CA3 2001)................................................... 4 
Nixon v. Shrink Missouri Government PAC, 528 
   U.S. 377 (2000)................................................................... 9 



                                            iii 
Samuels, Kramer & Co. v. CIR, 930 F.2d 975 
   (CA2), cert. denied, 502 U.S. 957 (1991) .......................... 4 
Schnapper v. Foley, 667 F.2d 102 (CADC 1981), 
   cert. denied, 455 U.S. 948 (1982)..................................... 16 
Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 
   1257 (CA11 2001) ............................................................ 12 
Swan v. Peterson, 6 F.3d 1373 (CA9 1993), cert. 
   denied, 513 U.S. 985 (1994)............................................... 6 
Teague v. Lane, 489 U.S. 288 (1989)..................................... 9 
Tyler v. City of Manhattan, 118 F.3d 1400 (CA10 
   1997)................................................................................... 6 
United States v. Matthews, 209 F.3d 338 (CA4), 
   cert. denied, 531 U.S. 910 (2000)....................................... 4 
United States v. Morrison, 529 U.S. 598 (2000) .................. 17 
     Rules 
D.C. Cir. R. 29 ........................................................................ 9 
Fed. R. App. P. 2..................................................................... 7 
Fed. R. App. P. 29.......................................................... passim 
Fifth Cir. Local R. 29.2........................................................... 9 
Supreme Court Rule 37..................................................... 7, 10 
Third Cir. Local App. R. 29.1................................................. 9 
     Other Authorities 
1967 Adv. Comm. Note to Fed. R. App. P. 2......................... 7 
1967 Adv. Comm. Note to Fed. R. App. P. 29....................... 7 
1998 Adv. Comm. Note to Fed. R. App. P. 29....................... 8 
New Lexicon Webster's Dictionary (1994).......................... 17 
Ninth Cir. R. 29-1, Cir. Adv. Comm. Note............................. 9 



       
                                                      

                                            IN THE 
     S
     S
     S
     Suuuupreme Court of the United S
           preme Court of the United S
           preme Court of the United S
           preme Court of the United Sttttates
                                                                           ates
                                                                           ates
                                                                           ates    
 
                                  ERIC ELDRED, et al.,  
                                                                 
                                                          Petitioners, 
                                                v. 
                                  JOHN D. ASHCROFT,  
                 In his official capacity as Attorney General,  
                                                      
                                                          Respondent. 
                                                      
                    On Petition for Writ of Certiorari to the  
United States Court of Appeals for the District of Columbia Circuit 
 

                    INTEREST OF AMICI CURIAE1 
      Eagle Forum Education & Legal Defense Fund ("Eagle 
Forum ELDF") is an Illinois nonprofit corporation organized 
in 1981.  Eagle Forum ELDF's mission is to enable conserva-
tive and pro-family men and women to participate in the 
process of self-government and public policy making so that 
America will continue to be a land of individual liberty, fam-
ily integrity, and respect for the United States Constitution.  
One of the ways Eagle Forum ELDF performs these functions 
is through filing amicus curiae briefs in this Court and in the 
federal circuit courts of appeals.  It thus has a significant in-
                                                 
1 This brief is filed with the written consent of all parties.  No counsel for 
a party authored this brief in whole or in part, nor did any person or entity, 
other than amici or their counsel, make a monetary contribution to the 
preparation or submission of this brief. 



                                                2 
terest in the treatment of arguments by amici by this Court 
and other federal courts.  Eagle Forum ELDF also has a sig-
nificant interest in striking the retroactive provisions of the 
Sonny Bono Copyright Term Extension Act of 1998 
("CTEA") as an overreaching by Congress beyond the limita-
tions imposed by the Copyright Clause and the First Amend-
ment. 
      The Cato Institute was established in 1977 as a nonparti-
san public policy research foundation dedicated to advancing 
the principles of individual liberty, free markets, and limited 
government.  Cato's Center for Constitutional Studies was 
established in 1989 to help restore the principles of limited 
constitutional government and to secure those rights, both 
enumerated and unenumerated, that are the foundation of in-
dividual liberty.  Toward those ends the Institute and the Cen-
ter undertake a wide variety of publications and programs, 
including  amicus briefs in the federal courts of appeals and 
this Court.  The instant case raises squarely the question of 
the role of amici in the federal courts and thus is of central 
interest to Cato and the Center.2  
                       SUMMARY OF ARGUMENT 
      This case raises important issues regarding the constitu-
tional constraints upon Congress's copyright powers that have 
divided the courts of appeals.  It also involves a significant 
and frequently-occurring issue regarding the role of amici cu-
riae that impacts the administration of justice and likewise 
has divided the courts of appeals.  In the course of rejecting 
petitioners' position on the constitutional issues presented, the 
D.C. Circuit refused to consider additional arguments pre-
sented by amici in support of petitioners on those same issues, 
and thereby eliminated any role for amici solely because 

                                                 
2 Cato joins Parts I & II of this brief regarding the role of amici in the 
courts of appeals, but takes no position on the merits of the First Amend-
ment and Copyright Clause issues discussed in Parts III & IV. 



                               3 
those arguments had not been made or adopted by the parties 
in this case.  That limitation on the role of amici, however, is 
contrary to Federal Rule of Appellate Procedure 29, every 
Local Rule that addresses the content of amicus briefs, and 
the approach taken by this Court and six circuit courts of ap-
peals.  Rule 29 and the majority of courts disfavor repetitive 
arguments by amici and affirmatively encourage amici to 
raise new legal arguments not raised by the parties.  The ap-
proach now adopted by the D.C. Circuit and used in three 
other circuits, however, turns the role of amici on its head and 
harms the administration of justice by allowing the creation of 
precedent based on incomplete or erroneous constructions of 
law that will have impact far beyond the parties themselves. 
   Regarding the constitutional questions presented by the 
petition, the decision below is wrong on both textual and 
structural grounds.  The First Amendment imposes a con-
straint on Congress' copyright power that is not limited to, or 
satisfied by, copyright's idea/expression dichotomy.  Particu-
larly where new statutory provisions increase the burden on 
speech, traditional First Amendment scrutiny is appropriate 
for such provisions.  The D.C. Circuit's categorical rejection 
of the First Amendment challenge to retroactive extension of 
copyrights thus is inconsistent with the limitations placed by 
the First Amendment on all exercises of Article I powers.  
The court's interpretation of the Copyright Clause also is in-
consistent with the Constitution, rendering superfluous the 
very definition of Congress' power "To promote the Progress 
of Science."  Unconditional retroactive extension of existing 
copyrights does not promote progress at all, and effectively 
eliminates the requirement that copyrights be granted only for 
"limited Times."   



                               4 
                        ARGUMENT 

I. THE  DECISION  BELOW  IS IN THE MINORITY OF A 6-4 
     CIRCUIT SPLIT REGARDING THE ROLE OF AMICI. 
   Federal Rule of Appellate Procedure 29(a) provides that a 
non-governmental amicus curiae "may file a brief * * * if the 
brief states that all parties have consented to its filing."  De-
spite this express authorization to file an amicus brief where 
all parties have consented (as in this case), there is a circuit 
split over whether a court of appeals must consider supple-
mental arguments by amici that are relevant to the issues on 
appeal when the parties have not likewise made the same ar-
guments to that court.  The D.C. Circuit in this case takes the 
minority view that such supplemental arguments are not 
properly before the court. 
   At least six circuits will consider supplemental arguments 
raised by amici that are not also made by the parties on ap-
peal.  See Massachusetts Food Ass'n v. Massachusetts Alco-
holic Beverages Control Comm'n, 197 F.3d 560, 567 (CA1 
1999) (finding no need to allow intervention in order to raise 
new legal arguments because "a court is usually delighted to 
hear additional arguments from able amici that will help the 
court toward right answers"), cert.  denied, 529 U.S. 1105 
(2000); Samuels, Kramer & Co. v. CIR, 930 F.2d 975, 986 & 
n. 9, 988-990 (CA2) (considering argument by amicus regard-
ing a phrase in Appointments Clause even though party relied 
upon different language and expressly rejected reliance on 
language argued by amicus),  cert.  denied, 502 U.S. 957 
(1991); New Castle County v. National Union Fire Ins. Co., 
243 F.3d 744, 754 (CA3 2001) (noting that "[o]f the three 
briefs submitted in this case, only the amicus attempts a pub-
lic policy argument," and addressing that argument); United 
States v. Matthews, 209 F.3d 338, 344 n. 3 (CA4) (addressing 
the merits of an argument expressly eschewed by the party at 
oral argument but raised by one of his amici),  cert.  denied, 



                                5 
531 U.S. 910 (2000); Bridges v. City of Bossier, 92 F.3d 329, 
335 n. 8 (CA5 1996) (allowing argument "first raised" by 
amicus but which had not been argued by appellant in the dis-
trict court or in his initial brief on appeal, and citing Corro-
sion Proof Fittings v. EPA, 947 F.2d 1201, 1208 (CA5 1991), 
for the proposition that the "court can consider different ar-
guments raised by amicus curiae  on  issues  raised  by  appel-
lant"), cert. denied, 519 U.S. 1093 (1997); Gulf Power Co. v. 
United States, 187 F.3d 1324, 1330-31 (CA11 1999) (ad-
dressing on the merits different arguments from amici on a 
takings question). 
   Contrary to that wide acceptance of new amicus argu-
ments on existing issues, however, the D.C. Circuit in this 
case held that it would not consider an argument by amicus 
relating to the proper construction of the Copyright Clause 
and to the circuit's erroneous precedent on the matter because 
it claimed that the "argument is rejected by the actual parties 
to this case and therefore is not properly before" the court.  
Pet. App. 11a.  The court further claimed that "because the 
plaintiffs conspicuously failed to adopt the argument of the 
amicus, the Government was not alerted to any need to argue 
this point and did not do so."  Id.; see also id. at 16a (argu-
ment made by amicus may only be considered "in a future 
case in which a party to the litigation argues the point"); id. at 
25a (opinion on rehearing) (even viewing the "issue" broadly, 
"we would still not reach what would then be the supporting 
argument of the amicus"); id. at 26a ("because the plaintiffs-
appellants did not take the same tack as the amicus, the Gov-
ernment did not on brief address the district court's interpreta-
tion of this court's decision in Schnapper").    
   Three other circuits similarly will not consider supple-
mental arguments on appeal by amici unless the parties have 
likewise made the same argument.  See National Comm'n on 
Egg Nutrition v. FTC, 570 F.2d 157, 160 (CA7 1977) (hold-
ing that because amicus' "argument was not made before the 
FTC or even by the petitioners themselves in this court [it] is 



                                6 
therefore not properly before us"), cert. denied, 439 U.S. 821 
(1978);  Swan  v. Peterson, 6 F.3d 1373, 1383 (CA9 1993) 
(holding that while new amicus arguments may be allowed on 
limited subjects, such as jurisdiction, that could be raised sua 
sponte, because the parties "did not adopt amicus' argument 
by reference in their brief and none of the other exceptions 
apply," it would not consider the argument by amicus), cert. 
denied, 513 U.S. 985 (1994); Tyler v. City of Manhattan, 118 
F.3d 1400, 1404 (CA10 1997) (declining to consider argu-
ment by amicus where party "did not adopt amicus' argument 
by reference in his brief" and the exceptions listed by the 
Ninth Circuit in Swan did not apply). 
    The broad circuit split regarding whether supplemental 
amicus arguments not expressly adopted by the parties may 
be considered by the courts of appeals should be resolved by 
this Court.  That issue is significant not just to matters of local 
circuit administration, but to the proper construction of the 
Federal Rules of Appellate Procedure and to the administra-
tion of justice in general. 

II. RESOLVING THE CIRCUIT SPLIT REGARDING THE ROLE 
     OF  AMICI  IS  IMPORTANT TO THE PROPER 
     ADMINISTRATION OF THE JUDICIAL  SYSTEM AND THE 
     FEDERAL RULES OF APPELLATE PROCEDURE.   
    Amici  curiae, particularly at the appellate level, play an 
important role in the administration of justice.  As cases move 
higher up in the judicial system, their effective impact rapidly 
expands beyond the particular parties or the local district, and 
encompasses persons in multiple states and throughout the 
country as a whole.  That expanding impact is particularly 
noticeable in the D.C. Circuit, where the court often rules on 
nationwide programs and sets precedent with impact far be-
yond its geographic borders.  Given the reach of such deci-
sions, it is important that courts of appeals remain open to 
consideration of all legal arguments relevant to the resolution 
of issues properly before them. 



                                                7 
      The split in authority regarding the role of amici is espe-
cially troubling because the minority view excluding new 
amicus arguments is contrary to the Federal Rules of Appel-
late Procedure.  As noted above, amici having the consent of 
the parties need no further authority to file their briefs.  Their 
right to file in such circumstances is provided directly by the 
Federal Rules.   
      When adopted in 1967, Rule 29 regularized the treatment 
of amicus briefs, which previously had been regulated by lo-
cal rule in only five circuits.  The new Federal Rule followed 
the majority practice in the circuits by requiring leave of court 
to file an amicus brief, "except under the circumstances" of 
filing by certain government entities or filing with consent of 
the parties.  1967 Adv. Comm. Note to Fed. R. App. P. 29.3 
      The 1998 amendments to Rule 29 made a number of sub-
stantive changes that clarified the role of amici under the 
Rules.  In discussing a new requirement that an amicus seek-
ing leave to file from the court state the relevance of the mat-
ters discussed in its brief, the Advisory Committee clarified 
the role of amici by quoting from Supreme Court Rule 37.1: 
        "An amicus curiae brief which brings relevant matter 
    to the attention of the Court that has not already been 
    brought to its attention by the parties is of considerable 
    help to the Court.  An amicus  curiae brief which does 

                                                 
3  Federal Rule of Appellate Procedure 2 provides that "a court of appeals 
may  to expedite its decision or for other good cause  suspend any pro-
vision of these rules in a particular case and order proceedings as it di-
rects, except as otherwise provided in Rule 26(b)."  The primary purpose 
of this rule is to grant power to courts of appeals to "expedite the determi-
nation of cases of pressing concern to the public or to litigants by prescrib-
ing a time schedule other than that provided by the rules" and to relieve 
litigants of the consequences of defaults under the rules where "manifest 
injustice would otherwise result."  1967 Adv. Comm. Note to Fed. R. 
App. P. 2.  Neither circumstance is relevant to this case or to the general 
issue of whether a court must consider different arguments timely pre-
sented by amici on the issues presented in a case. 



                                8 
  not serve this purpose simply burdens the staff and fa-
  cilities of the Court and its filing is not favored." 
1998 Adv. Comm. Note to Fed. R. App. P. 29, subd. (b).   
   The clear expectation is that amici in the courts of ap-
peals, no less than in the Supreme Court, will say something 
new  something not already said by the parties  and that 
significant overlap between the arguments of the parties and 
the amici would be considered a burden on the courts.  That 
expectation is confirmed by the shorter page limits for amicus 
briefs provided in the 1998 amendments.  As explained in the 
Advisory Committee Notes, such shorter limits are appropri-
ate because "an amicus brief is supplemental" and "should 
treat only matter not adequately addressed by a party."  1998 
Adv. Comm. Note to Fed. R. App. P. 29, subd. (d).   
   The propriety of supplemental arguments also is reflected 
in the requirement that the brief must be filed "no later than 7 
days after the principal brief of the party being supported is 
filed," unless the court grants leave for later filing.  Fed. R. 
App. P. 29(e).  As explained by the Advisory Committee, the 
"7-day stagger was adopted because it is long enough to per-
mit an amicus to review the completed brief of the party be-
ing supported and avoid repetition argument."  1998 Adv. 
Comm. Note to Fed. R. App. P. 29, subd. (e).  The stagger is 
sufficiently short so that the "opposing party will have suffi-
cient time to review arguments made by the amicus and ad-
dress them in the party's responsive pleading."  Id. 
   Most circuits have found it unnecessary to supplement the 
Federal Rules concerning the nature of amicus participation.  
Four circuits, however, have confirmed through local rules 
the essential point that amici are expected to make new argu-
ments, not merely echo the parties.  The D.C. Circuit, for ex-
ample, has the most forceful reiteration of this basic point, 
requiring that an amicus brief "must avoid repetitious of facts 
or legal arguments made in the principal (appellant/petitioner 
or appellee/respondent) brief and focus on points not made or 



                                                9 
adequately elaborated upon in the principal brief, although 
relevant to the issues before this court."  D.C. Circuit Rule 29.  
Local Rules from three other circuits are to similar effect.4 
      Moreover, this Court itself has considered arguments and 
even claims raised on appeal only by an amicus.  In Teague v. 
Lane, 489 U.S. 288, 300 (1989), this Court addressed a retro-
activity argument notwithstanding that "[t]he question of ret-
roactivity with regard to petitioner's fair cross section claim 
has been raised only in an amicus brief."  Likewise, in Mapp 
v. Ohio, 367 U.S. 643, 646 n. 3 (1961), this Court noted, in 
the course of overruling prior precedent, that "[a]lthough 
appellant chose to urge what may have appeared to be the 
surer ground for favorable disposition and did not insist that 
Wolf be overruled, the amicus curiae * * * did urge the Court 
to overrule Wolf."  See also Florida v. J.L., 529 U.S. 266, 272 
(2000) (addressing the merits of a separate amicus argument 
on the reliability of a tip); Nixon v. Shrink Missouri Govern-
ment PAC, 528 U.S. 377, 395 n. 7 (2000) (addressing the 
merits of an amicus argument that contribution limits were 
insufficiently narrow for First Amendment purposes in light 
of other means of addressing the harms alleged); Montana v. 
Egelhoff, 518 U.S. 37, 46-48 (1996) (considering the merits 
of  amicus' alternative theory of a due process violation).  
Given that Rule 29 is expressly modeled on this Court's own 
                                                 
4 See Third Cir. Local App. R. 29.1 (for amicus briefs on rehearing: "Be-
fore completing the preparation of an amicus brief, counsel for an amicus 
curiae shall attempt to ascertain the arguments that will be made in the 
brief of any party whose position the amicus is supporting, with a view to 
avoiding any unnecessary repetition or restatement of those arguments in 
the  amicus brief."); Fifth Cir. Local R. 29.2 (an amicus brief "should 
avoid the repetition of facts or legal arguments contained in the principal 
brief and should focus on points either not made or not adequately dis-
cussed in those briefs"); Ninth Cir. R. 29-1, Cir. Adv. Comm. Note 
("Movants are reminded that the court will review the amicus curiae brief 
in conjunction with the briefs submitted by the parties, so that amicus 
briefs should not repeat arguments or factual statements made by the par-
ties."). 



                               10 
Rule 37, the practice of this Court is instructive on the proper 
interpretation of Rule 29 in the courts of appeals. 
   Federal Rule of Appellate Procedure 29 provides a uni-
form rule that contemplates significant and non-redundant 
participation by amici curiae.  Alternative legal arguments on 
existing issues fit precisely within the purpose of that Rule.  
The approach taken by the D.C. Circuit, however, effectively 
destroys the role of amici, or forces them to do exactly what 
the rules declare they should avoid  merely repeat or embel-
lish the arguments already made by the parties.  As Judge 
Sentelle correctly noted in his dissent from the panel decision, 
amicus in this case did "precisely" what was required of it in 
"avoiding repetition of facts or legal arguments" already 
made, and its supplemental arguments should have been con-
sidered fully on the merits.  Pet. App. 22a.  By refusing to 
consider those arguments, the D.C. Circuit's decision "effec-
tively eliminates any role for amicus curiae in the practice of" 
the circuit.  Id. at 28a (Sentelle, J., dissenting from the denial 
of rehearing en banc).   
  If allowed to stand, this holding will effectively bar fu-
  ture amici from adding anything except possibly rhetori-
  cal flourish to arguments already outlined and embraced 
  by the parties.  This is particularly the case for those 
  amici who, true to their traditional role as "friends of the 
  court," operate independently to assist the Court in its 
  determinations.   
Id. at 31a.  Because Federal Rule 29 eschews such a useless 
and court-burdening role for amici, and because the circuits 
are split over this important question for the administration of 
the appellate courts, this Court should grant the petition and 
re-establish the uniform and sensible approach contemplated 
by Rule 29. 



                               11 
III. THE  FIRST  AMENDMENT  CONFLICT  SHOULD  BE 
     RESOLVED  PROMPTLY  DUE TO THE NATIONWIDE 
     CHILL  CREATED BY THE CTEA AND THE DECISION 
     BELOW.   
     The D.C. Circuit below held that "copyrights are cate-
gorically immune from challenges under the First Amend-
ment."  Pet. App. 6a.  As petitioners correctly note, such a 
categorical exclusion of Congress' copyright power from 
First Amendment scrutiny conflicts with the approach 
adopted by the Eleventh Circuit.  See Pet. 22-23 (discussing 
CBS Broadcasting, Inc. v. EchoStar Communications Corp., 
265 F.3d 1193 (CA11 2001)).  Because much of the confu-
sion in this area is a function of potentially ambiguous guid-
ance from this Court in Harper & Row Publishers, Inc. v. Na-
tion Enterprises, 471 U.S. 539 (1985), it will not be resolved 
until this Court clarifies the constitutional truism that all of 
Congress' enumerated powers are subject to, and constrained 
by, the First Amendment.  
   In  Harper & Row, this Court addressed the situation 
where the defendant "effectively arrogated to itself the right 
of first publication." 471 U.S. at 549.  This Court quoted with 
approval the statement that "copyright's idea/expression di-
chotomy `strike[s] a definitional balance between the First 
Amendment and the Copyright Act by permitting free com-
munication of facts while still protecting an author's expres-
sion.'"  Id. at 556 (citation omitted).  That statement, unfortu-
nately, has been taken to mean that so long as the 
idea/expression dichotomy is in place, no other aspect of 
copyright law is subject to First Amendment scrutiny.  Such 
an extreme conclusion, however, goes too far.  To say, in the 
context of the first-publication right in Harper & Row, that 
copyright may protect "expression" without violating the First 
Amendment is a far cry from saying that the First Amend-
ment allows any form of restriction to be placed on "expres-
sion" rather than "ideas."  And, indeed, this Court did not 
make such a sweeping ruling.  Rather, it merely rejected a 



                              12 
reading of the First Amendment that would "effectively de-
stroy any expectation of copyright protection in the work of a 
public figure," id. at 557, and thus completely override core 
aspects of the copyright power.  That this Court took the time 
to note copyright's positive effects on First Amendment val-
ues in the context of that case, id. at 559, actually demon-
strates the propriety of a targeted First Amendment analysis 
rather than simply applying a categorical rule excepting all 
copyright restrictions on "expression" from First Amendment 
scrutiny.  
    While the exercise of the copyright power will, in many 
instances, survive First Amendment scrutiny, the provisions 
of the Copyright Act in general, and each new expansion of 
that Act in particular, are nonetheless subject to such scrutiny 
and the survival of each added speech restriction is not preor-
dained.  The establishment of "fair use," first as a judicial 
doctrine and then as a statutory rule, illuminates that point.  
As the Eleventh Circuit recently observed in Suntrust Bank v. 
Houghton Mifflin Co., 268 F.3d 1257, 1264 (CA11 2001), 
prior to 1976, "fair use was a judge-made right developed to 
preserve the constitutionality of copyright legislation by pro-
tecting First Amendment values."  In 1976, however, Con-
gress amended the Copyright Act and effectively increased its 
restriction on speech by eliminating the requirement that au-
thors publish their works in order to receive copyright protec-
tion.  The statute, however, also codified fair use as a limita-
tion on copyright.  "Had fair use not been recognized as a 
right under the 1976 Act, the statutory abandonment of publi-
cation as a condition of copyright that had existed for over 
200 years would have jeopardized the constitutionality of the 
new Act because there would be no statutory guarantee that 
new ideas, or new expressions of old ideas, would be accessi-
ble to the public."  Id. (emphasis added).  Notwithstanding the 
idea/expression dichotomy, therefore, the newly restrictive 
aspect of the 1976 Copyright Act was saved from likely con-



                               13 
stitutional infirmity by an independent accommodation of the 
First Amendment interests threatened. 
   The latest restriction added to the Copyright Act  a retro-
active twenty-year extension of existing monopolies  should 
likewise be considered separately from past endorsements of 
the Act in order to see whether such new restriction can sur-
vive the First Amendment or whether the burden on speech 
exceeds the trivial and speculative benefit alleged by the gov-
ernment.  When conducting such review, it is important to 
keep first principles firmly in mind. 
   As this Court has recently reiterated in another context, 
Article I powers do not supersede restrictions created by 
Amendments.  See, e.g.,  Florida Prepaid Postsecondary 
Educ. Expense Bd. v. College Sav. Bank, 527 U.S. 627, 635-
36 (1999) (provision that "[a]ny State * * * shall not be im-
mune, under the eleventh amendment of the Constitution of 
the United States or under any other doctrine of sovereign 
immunity, from suit in Federal court * * * for infringement of 
a patent" was unconstitutional, in part because "Congress 
may not abrogate state sovereign immunity pursuant to its 
Article I powers").  Rather, Amendments to the Constitution 
narrow congressional authority that would otherwise exist 
under Article I standing alone.  The First Amendment ques-
tion is whether government action is unconstitutional despite 
Congress' enumerated power.  The constitutional hierarchy is 
no different in the case of copyright law.  A law within Con-
gress's copyright power may still be prohibited by the First 
Amendment. 
   Once it is conceded that the First Amendment is indeed a 
restraint on the copyright power, it is not enough simply to 
rely upon the idea/expression dichotomy, particularly as new 
restrictions are added to the Copyright Act.  The notion that 
copyright only restricts particular expression, not the underly-
ing ideas, and hence is not subject to further First Amendment 
scrutiny, is mistaken.  The First Amendment protects not only 
the conveyance of concepts generally, but the particular form 



                                               14 
of expression as well.  It generally is left to the speaker to de-
cide not merely what to say, but also how to say it, and the 
First Amendment protects the intangible value associated 
with a particular "expression" independently from the under-
lying idea.5  Indeed, in the case of music and much poetry and 
art, there may not be much of an underlying "idea" at all be-
yond the descriptive beauty conveyed through the particular-
ized "expression."  Yet such work is protected by the First 
Amendment as well as by copyright, and the idea/expression 
dichotomy is insufficient to accommodate the First Amend-
ment interests at stake. 
      With Congress having retroactively redrawn the balance 
between the public domain and private authors, this Court 
should balance anew the First Amendment considerations im-
plicated by that retroactive change.  The gain from such an 
extension does not involve any addition to the incentive for 
authors to create new work, but rather involves only the pure 
speculation that the unconditional extension might encourage 
some authors to preserve existing works that they had not 
bothered to preserve during the existing term of their copy-
right.  But an additional twenty years of retroactive monopoly 
is a significant burden on First Amendment values.  The ex-
tension will hinder access to numerous works that would soon 
enter the public domain and that need no additional incentive 
for preservation.  And the CTEA will chill the public use of 
works having uncertain status or whose authors are not read-
ily located because few persons will risk the criminal penal-
ties for unauthorized use of such works.   
      Given the ongoing and irreparable burden on petitioners' 
and the public's First Amendment rights, this Court should 
grant the petition for certiorari in this case rather than wait for 

                                                 
5 The government could not, consistent with the First Amendment, restrict 
publication of works by Plato or Marx on the theory that the ideas could 
still be conveyed through other "expression."  



                               15 
further cases that may be exceedingly slow in developing due 
to the chill imposed by the CTEA. 

IV. THE  COPYRIGHT  CLAUSE  LIMITS  CONGRESS'  POWER 
     TO "PROMOT[ING] THE PROGRESS OF SCIENCE."   
   Petitioners correctly argue that the decision below war-
rants review because its erasure of the "promote the Progress" 
language from the Copyright Clause conflicts with the con-
struction of that Clause by this Court and by other circuits.  
See Pet. 12-17.  By unmooring the grant of exclusive rights 
from the very power that such grants were meant to support, 
the court below has done great damage both to the Copyright 
Clause and to the notion of limited and enumerated powers. 
   On the merits, the decision below misconstrues the Copy-
right Clause and largely ignores the arguments made by 
amicus.  Despite recognizing petitioners' argument that the 
"limited Times" requirement "is informed by the goal of `pro-
mot[ing] the Progress of Science and useful Arts,'" Pet. App. 
4a, the D.C. Circuit nonetheless refused to rule upon the 
argument by amicus Eagle Forum ELDF that the "promote 
the Progress" language of the Copyright Clause defines, and 
therefore delimits, congressional power in this area as "pro-
mot[ing] the Progress of Science."  The structure of the clause 
defines a power "to do X by means of Y."  In the case of the 
copyright power, "X"  to promote the progress of science  
is not a superfluity; it is the power granted to Congress.  The 
remainder of the clause  "by securing for limited Times," 
etc.  is not an affirmative grant; it is a negative limit on the 
means by which the power "[t]o promote" may be exercised. 
   This Court has recognized the correct structural reading of 
Article I, section 8 in the context of the Patent Clause. In 
Graham v. John Deere Co., this Court stated: 
     The clause is both a grant of power and a limitation. 
  This qualified authority * * * is limited to the promotion 
  of advances in the "useful arts."  * * *  The Congress in 



                                               16 
    the exercise of the patent power may not overreach the 
    restraints imposed by the stated constitutional purpose. 
    * * * [A patent system] by constitutional command must 
    "promote the Progress of * * * useful Arts." This is the 
    standard expressed in the Constitution and it may not be 
    ignored. 
383 U.S. 1, 5-6 (1966) (emphasis added).  If patent laws 
"must `promote the Progress of * * * useful Arts,'" then 
surely copyright laws similarly "must" promote "the Progress 
of Science," and Congress' copyright power is limited ac-
cordingly. 
     Despite this seemingly self-evident construction of the 
Copyright Clause, the D.C. Circuit instead chose to rely upon 
its earlier decision in Schnapper v. Foley, 667 F.2d 102, 112 
(CADC 1981), cert. denied, 455 U.S. 948 (1982), holding that 
the "introductory language of the Copyright Clause does not 
limit this power."  While petitioners had sought to work 
around Schnapper by arguing that the introductory language 
nonetheless must inform the construction of the "limited 
Times" language in the Copyright Clause, amicus took a more 
direct approach, arguing variously that Schnapper could be 
read more narrowly to allow the correct interpretation of the 
"promote" language, that Schnapper's language to the con-
trary was at best dicta, or that the case should simply be over-
ruled  en  banc because the purported holding was plainly 
wrong.  See Br. of Eagle Forum ELDF, at 6 & n. 3. 
      On the question of whether the CTEA in fact promotes the 
progress of science, retrospective extension of existing copy-
rights does nothing to induce the creation of additional writ-
ings and hence does not promote science.  As for the D.C. 
Circuit's claim that such extension encourages the preserva-
tion of existing works, retroactive promotion of preservation 
does not constitute promotion of progress.6  "Progress" in-
                                                 
6 The court below discussed this argument in the hypothetical, offering its 
advisory views on the topic despite refusing to consider and rule formally 



                                               17 
volves forward movement, advancement, and creation, 
whereas preservation involves the very different realm of sta-
sis and avoidance of decay.  Compare New Lexicon Web-
ster's Dictionary 799 (1994) ("Progress" means "forward 
movement," "improvement, advancement"), with  id. at 792 
("preserve * * * to keep up, maintain, prevent from ruin or 
decay").  While preservation might benefit science or the pub-
lic generally, authorizing the promotion of mere preservation 
would effectively nullify the word "Progress" and more 
broadly empower Congress to promote science in toto.   
      Furthermore, because the retroactive extension is not con-
ditioned on any further action by copyright holders, there is 
no credible reason to believe that the extension will induce 
owners to preserve any works that they have, by hypothesis, 
already neglected for years.  The CTEA thus does not "pro-
mote" progress or anything else because the connection be-
tween the given right and the supposed benefit is too attenu-
ated and speculative.  As this Court observed in United States 
v. Morrison, 529 U.S. 598, 615 (2000), reasoning that follows 
a "but-for causal chain * * * to every attenuated effect" im-
plicating an enumerated power is "unworkable if we are to 
maintain the Constitution's enumeration of powers."  While it 
might be different if the retroactive extension were somehow 
conditioned on further acts of creativity, merely throwing 
monopoly rights at people in the attenuated hope they use 
them beneficially only mocks the constitutional enumeration.7  
                                                                                                     
on the arguments of amicus.  See Pet. App. 12a ("If called upon to do so, 
therefore, we might well hold that the application of the CTEA to subsist-
ing copyrights" was a "necessary and proper" action promoting the pro-
gress of science) (emphasis added). 
7 It is highly doubtful whether Congress could grant a new copyright for 
the preservation of an existing work.  Such a copyright would appear to 
violate the requirement of originality and the prohibition against removing 
works from the public domain.  Yet that is precisely the effect of retroac-
tively extending copyrights:  Granting more years of exclusive rights in 
return for the hope of preservation of works that otherwise would enter the 
public domain in due course. 



                               18 
Handing Disney a gift of twenty more years on the copyright 
for Mickey Mouse, without even requiring that it convert the 
copyrighted material into a format that will be preserved and 
available for public use in the future, is not the promotion of 
progress, it is simply corporate welfare.  
   Finally, regarding the nature of the "limited Times" al-
lowed for exclusive rights to writings, the approach taken be-
low drains meaning from that language.  The correct con-
struction recognizes that the Copyright Clause's use of the 
plural "Times" matches the plural "Writings and Discover-
ies," but that its use of the singular "the exclusive Right" sug-
gests only a singular "Time[]" per each writing or discovery.  
That interpretation requires Congress to select a time and 
stick to it for copyrights already granted, though it could 
modify the "Time[]" prospectively as to any future copyright.  
It also has the benefit of avoiding the seriatim grant of sup-
posedly limited copyright terms that could, as a practical mat-
ter, be repeated indefinitely.  Under the approach endorsed by 
the D.C. Circuit, for example, the copyright on Mickey 
Mouse already has received two approximately twenty-year 
extensions, and the court of appeals suggests no legal princi-
ple that could prevent the next extension twenty years hence, 
or any other extension ad infinitum.  Absent some theory lim-
iting such repetition, the decision below renders the "limited 
Times" language meaningless. 
   Because the decision below eviscerates the enumerated 
limits on the copyright power, and because it conflicts with 
decisions from this Court and other courts of appeals, it war-
rants plenary review. 
                          CONCLUSION 
   For the foregoing reasons, the Petition for Writ of Certio-
rari should be granted. 
    
    



                              19 
 
 Respectfully 
                                              Submitted, 
                                 ERIK S. JAFFE 
                                    Counsel of Record 
                                ERIK S. JAFFE, P.C. 
                                5101 34th Street, N.W. 
                                Washington, D.C.  20008 
                                (202) 237-8165 
                                 Counsel for Amici Curiae 
                                 
Dated: December 13, 2001.