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 a Writ of Certiorari to the
                  United States Court of Appeals
            for the District of Columbia Circuit

       REPLY BRIEF FOR THE PETITIONERS


GEOFFREY S. STEWART                    LAWRENCE LESSIG
DANIEL H. BROMBERG                       (Counsel of Record)
H. BRIAN HOLLAND                       CENTER FOR INTERNET & SOCIETY
JONES, DAY, REAVIS & POGUE             Stanford Law School
51 Louisiana Avenue, N.W.              559 Nathan Abbott Way
Washington, D.C. 20001                 Stanford, CA 94305
(202) 879-3939                         (650) 736-0999

                                       CHARLES R. NESSON
                                       JONATHAN L. ZITTRAIN
                                       THE BERKMAN CENTER 
                                           FOR INTERNET & SOCIETY
                                       1563 Massachusetts Avenue
                                       Cambridge, MA 02138
                                       (617) 495-7547



                                         ii

                      TABLE OF CONTENTS
                                                                              Page
INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
I. THERE IS A REAL AND GROWING SPLIT OF
    AUTHORITY MERITING THIS COURT'S
    REVIEW. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
    A. There Is A 3-1 Split Over The Relevant Scope
         Of First Amendment Review Of A Copyright
         Statute . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
    B. There Is A 5-2 Split Over The Relevance Of The
         "Grant of Power" In The Copyright Clause To
         The Scope of Congress's Power . . . . . . . . . . . . . . 5
II. THE COURT OF APPEALS DID NOT RESOLVE
    PETITIONERS' COPYRIGHT CLAUSE
    CHALLENGE UPON AN ALTERNATIVE
    GROUND. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
III. THE GOVERNMENT'S REMAINING
    ARGUMENTS  ON  THE  MERITS  MUST  FAIL . . . . 8
IV. IMMEDIATE RESOLUTION OF THESE ISSUES
    IS REQUIRED TO AVOID ENORMOUS HARM. . 10
CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10



                                        iii

                   TABLE OF AUTHORITIES 
                                                                             Page
                          FEDERAL CASES 

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 
    489 U.S. 141 (1989) ...................................................... 8
CBS Broad., Inc. v. EchoStar Communications Corp.,      
    265 F.3d 1193 (11th Cir. 2001) .................................... 4
Eldred v. Reno, 239 F.3d 372 (D.C. Cir. 2001) .......... 1, 2, 5
Feist Publ'ns v. Rural Tel. Ser. Co., 
    499 U.S. 340 (1991) ...................................................... 8
Graham v. John Deere Co., 383 U.S. 1 (1966) .............. 6, 8
Hutchinson Tel. Co. v. Fronteer Directory Co.,      
    770 F.2d 128 (8th Cir. 1985) ........................................ 5
McClurg v. Kingsland, 42 U.S. (1 How.) 202 (1843) ......... 9
Mitchell Brothers Film Group v. Cinema Adult Theater,  
    604 F.2d 852 (5th Cir. 1979) ........................................ 6
Printz v. United States, 521 U.S. 898 (1997) ...................... 8
Satellite Broad. and Communications Ass'n v. FCC, 2001
WL 1557809 (4th Cir. 2001) .............................................. 4
Schnapper v. Foley, 667 F.2d 102 (D.C. Cir. 1981) ........... 5
Universal City Studios, Inc. v. Corley, 2001 WL 1505495
    (2d Cir. 2001) ................................................................ 4
Wheaton v. Peters, 33 U.S. (8 Peters) 591 (1834) .............. 9
                   SUPREME COURT BRIEFS
Brief of Petitioners for Writ of Certiorari, 
    New York Times v. Tasini, No. 00-201 (2000) ........ 1, 10



                                        iv

                       FEDERAL STATUTES 
Act of May 31, 1790, ch. 15, 1, 3, 1 Stat. 124-25 ......... 8, 9
Sonny Bono Copyright Term Extension Act ("CTEA"),  
    Pub. L. No. 105-298, 112 Stat. 2827 (1998) ................. 3
                          MISCELLANEOUS 
Lyman Ray Patterson, COPYRIGHT IN HISTORICAL
    PERSPECTIVE (1968) ...................................................... 9
Robert L. Stern & Eugene Gressman, SUPREME COURT
    PRACTICE (7th ed. 1993) ............................................... 3
Joseph Story, COMMENTARIES ON THE CONSTITUTION OF
    THE UNITED STATES  502 (R. Rotunda & J. Nowak
    eds., 1987) ................................................................... 10



 

                         INTRODUCTION
      "[T]here is no apparent substantive distinction between
      permanent protection and permanently available authority
      to extend originally limited protection.  The Congress that
      can extend the protection of an existing work from 100
      years to 120 years ....  This, in my view, exceeds the proper
      understanding of enumerated powers reflected in the Lopez
      principle of requiring some definable stopping point."
Eldred v. Reno, 239 F.3d 372, 382 (D.C. Cir. 2001) (Sentelle,
J., dissenting) (emphasis added).
      The government's reply is important as much for what it
does not say as for what it says.  First, the government does
not deny that there is a split in the circuits about two
fundamental questions affecting the scope of Congress's
Copyright Clause power.  It argues that those conflicts do not
"implicate" issues in this case (Opp. 12), but not that they
don't exist.  
      Second, the government does not argue that these
fundamental issues are unimportant, or do not merit this
Court's attention.  To the contrary, by singling out the third
question presented and arguing that question does not merit
Supreme Court review (Opp. 23), the government, by
implication, acknowledges the special concern this Court has
demonstrated for copyright cases, even without a direct
conflict.   The claims of the Amici filed in this Court
           1

demonstrate the importance of the issues raised in this case to
the preservation and extension of the public domain, and the


  
1 See Brief of Petitioners for Writ of Certiorari, New York Times v. Tasini,
No. 00-201, 10 (asserting review in copyright cases is granted "even
absent a direct circuit conflict," citing Campbell v. Acuff-Rose Music, 510
U.S. 569 (1994); Feist Publications, Inc. v. Rural Tel. Serv. Co., Inc., 499
U.S. 340 (1991); Harper & Row v. Nation Enters., 471 U.S. 539 (1985);
Mills Music v. Snyder, 469 U.S. 153 (1984); Sony Corp. v. Universal City
Studios, 464 U.S. 417 (1984)), cert. granted 531 U.S. 978 (2000).



                                 2

need for this Court to resolve these issues quickly.  See, e.g.,
Brief of Amicus Curiae Internet Archive; Brief of Amici
Curiae American Association of Law Libraries, et al. 
     Third, and most tellingly, the government offers no reply to
Judge Sentelle's charge that its reading of the term "limited
times" provides no "definable stopping point" to Congress's
Copyright Clause power.  Eldred, 239 F.3d at 382 (Sentelle,
J., dissenting).  Under the government's reading of the Clause,
ratified by the decision below, there is no constitutional
limitation on Congress's power to extend the term of
copyright, so long as each extension is itself "limited." 
     Rather than answering Judge Sentelle's charge, the
government instead characterizes as "hyperbolic" petitioners'
(and presumably Judge Sentelle's) fear that Congress has
already adopted the practice of perpetually extending the term
of existing copyrights.  That concern, the government asserts,
is "clearly ... not the situation here." (Opp. 17 n.3, citations
omitted.)  But petitioners are not attacking some vague fear
about Congress's future practice.  It is a fact, not hyperbole,
that Congress has extended the term of subsisting copyrights
eleven times in the past 40 years (Pet. 2), and that these
extensions have grown from relatively short extensions of one
or two years, to 19 years in 1976, and then 20 years in 1998.
(Id.) 
     To resist petitioners' claims, the government argues (1) that
the split in circuit authority is not relevant to the resolution of
this case, (2) that petitioners' Copyright Clause claim was
resolved against petitioners on an alternative ground, thereby
rendering "this Court's resolution of the alleged circuit
conflicts wholly advisory" (Opp. 18), and (3) that the Court of
Appeals's decision is correct on the merits.  All three
arguments are wrong.



                                3

I. THERE IS A REAL AND GROWING SPLIT OF
     AUTHORITY MERITING THIS COURT'S REVIEW.
     The government argues that there is no split in authority
affecting the resolution of this case.  This argument trivializes
this Court's supervisory authority.  Robert L. Stern & Eugene
Gressman, SUPREME  COURT  PRACTICE  168 (7th ed. 1993)
(recognizing cert. jurisdiction for conflict "in principle").  The
government is correct that there is no split on whether the
Sonny Bono Copyright Term Extension Act ("CTEA"), Pub.
L. No. 105-298, 112 Stat. 2827 (1998), is constitutional.  That
fact is unsurprising, as this is the first case to challenge a
statute by Congress extending copyright terms. 
     But in resolving petitioners' claims in the court below, the
D.C. Circuit relied upon two lines of authority that are
themselves the subject of conflicts in principle.  The
government argues that the split affecting the meaning of the
Copyright Clause is not sufficiently pronounced.  (Opp. 17.)
Petitioners disagree.  But the government does not deny the
split affecting the interaction between the Copyright Clause
and the First Amendment (Opp. 22-23), and this split has
become even more firmly entrenched in the two months since
petitioners' initial filing.
     These two separate conflicts fundamentally affect
Congress's power under the Copyright Clause, and if either
were resolved differently, then the outcome in this case would
likely be different.  Thus, it is completely appropriate for this
Court to grant review, not only to resolve the important
question of Congress's power to extend the term of copyright,
but also to resolve two conflicts that will continue to engender
confusion in lower courts. 



                                 4

     A. There Is A 3-1 Split Over The Relevant Scope Of
         First Amendment  Review Of A Copyright Statute.
     Petitioners have maintained that there is a split in authority
on whether copyright statutes should be tested under ordinary
First Amendment review.  The D.C. Circuit held that they
should not - finding that "copyrights are categorically
immune from challenges under the First Amendment." (Pet.
App. 6a.)  In considering a First Amendment challenge to
what the government rightly calls "a copyright statute" (Opp.
22), the Eleventh Circuit expressly held that they should -
applying intermediate First Amendment review to uphold the
challenged statute.  CBS Broad., Inc. v. EchoStar
Communications Corp., 265 F.3d 1193, 1211 (11th Cir. 2001).
     This decision in the 11th Circuit has now been followed by
the 4th Circuit, in a case addressing the same statute.  Satellite
Broad. and Communications Ass'n v. FCC, 2001 WL 1557809
(4th Cir. 2001).  And less than one month ago, the Second
Circuit followed the pattern of the 11th and 4th Circuits,
applying intermediate scrutiny to "a copyright statute" that
regulated technologies designed to circumvent copyright
protection technologies.  Universal City Studios, Inc. v.
Corley, 2001 WL 1505495, *12-14 (2d Cir. 2001).
     These decisions plainly evidence two different rules about
the relationship between "copyright statute[s]" (Opp. 22) and
ordinary First Amendment review.  In the D.C. Circuit,
"copyright  statutes remain largely immune from First
Amendment challenges."  (Opp. 22, emphasis added.)  In the
11th, 4th, and 2d Circuits, "copyright statutes" are not
"immune from First Amendment challenges."  (Id.)  These
results conflict.
     The government treats this conflict as irrelevant to the
merits of this case, because, as it writes, the 11th Circuit
"specifically endorsed the law of the D.C. Circuit in the
copyright/First Amendment context, stating that `[t]here is no
first amendment right to * * * make commercial use of the



                               5

copyrighted works of others.'" (Opp. 22-23.)  But petitioners
have never asserted a First Amendment right to use the
copyrighted works of others.  Our only claim has been that
courts within the D.C. Circuit should apply the same First
Amendment review of "copyright statutes" as the courts in the
11th, 4th, and 2d Circuits have to determine if certain creative
work can properly be copyrighted.
     Had petitioners been allowed the benefit of the First
Amendment rule from the 11th, 4th and 2d Circuits, then, we
submit, the government would have been unable to meet its
burden of demonstrating that the speech restrictive aspects of
the CTEA were justified under intermediate review.  Thus the
split in authority that we allege directly affects the outcome of
this case.  Petitioners are not asking this Court to reapply a
properly selected legal standard.  Petitioners complain that the
court below did not apply the proper legal standard because
the rule governing the selection of such a standard is in
dispute.  By resolving this dispute now, this Court could set
the standard that should govern challenges to copyright terms,
and set the framework for the inevitable conflicts that will
arise as copyright law intersects First Amendment interests. 
     B. There Is A 5-2 Split Over The Relevance Of The
        "Grant of Power" In The Copyright Clause To The
        Scope of Congress's Power.
     Following its earlier decision in Schnapper v. Foley, 667
F.2d 102 (D.C. Cir. 1981), the Court of Appeals held that the
"grant of power" in the Copyright Clause (giving Congress the
power "to promote the progress of Science and useful Arts")
does not "constitute[] a limit on congressional power."
Eldred, 239 F.3d at 378 (citations omitted).  The court thus
rendered this text a constitutional dictum.  Only one other
circuit has similarly dismissed the framers' text.  Hutchinson
Tel. Co. v. Fronteer Directory Co., 770 F.2d 128, 130 (8th Cir.
1985).  Other circuits have tried to give meaning to the text.
Following this Court's reasoning in Graham v. John Deere



                                      6

Co., 383 U.S. 1 (1966), these circuits have read the "grant of
power" to constrain Congress in the exercise of its Copyright
Clause power.  (Pet. 14-17.)  As the Fifth Circuit wrote in
Mitchell Bros. Film Group v. Cinema Adult Theater, 604 F.2d
852 (5th Cir. 1979), upholding the copyrightability of obscene
works against a constitutional attack, while the "words of the
copyright clause" do not require that individual copyrights be
shown to "promote science or useful arts," they plainly do
"require that Congress shall promote those ends." Id. at 859
(emphasis added).  "Congress' power," the court concluded,
"under this Clause is limited to action that promotes the useful
arts."  Id. at 860 (emphasis added).2
     The government dismisses these cases by arguing that they
were statutory cases interpreting the scope of the Copyright
Act.  (Opp. 16.)  That claim is untrue about Mitchell Brothers,
and is otherwise irrelevant.  Petitioners have argued that the
"grant of power" means something to the scope of Congress's
copyright power in the majority of circuits.  In the D.C. and
Eighth Circuits, it does not.  This difference is revealed in the
courts' interpretation of the Copyright Act.  But the difference,
however revealed, is plainly relevant to, and possibly
disposative of, petitioners' claims.  The division in authority
thus merits this Court's review. 
II. THE COURT OF APPEALS DID NOT RESOLVE
     PETITIONERS' COPYRIGHT CLAUSE
     CHALLENGE UPON AN ALTERNATIVE GROUND.
     The government argues that the D.C. Circuit resolved
petitioners' Copyright Clause claim on the alternative ground
that the CTEA is supported by Congress's power under the


2  The government asks "how a decision following Schnapper, which
follows  Mitchell Brothers, can have created a conflict with Mitchell
Brothers."  (Opp. 16.)  The answer is simple: the D.C. Circuit misread the
Fifth Circuit authority, and has thereby established authority that is in
conflict with five other circuits.



                                  7

Necessary and Proper Clause.  (Opp. 18.)  This is plainly
wrong, as the government's own summary of the case
demonstrates.  (Opp. 10-11.)  While the Court of Appeals did
rely upon the Necessary and Proper Clause to reject Amicus
Eagle Forum's interpretation of the "grant of power," it did
not rely upon the Necessary and Proper Clause to reject
petitioners' interpretation of the "grant of power."
     While petitioners expressly adopted Amicus's argument at
oral argument in the Court of Appeals (Tr. of Oral Arg. 17-18;
Pet. App. 29a.), and continue to embrace it in this Court, Eagle
Forum's argument is importantly different from the argument
advanced by petitioners.  Under its view, a statute granting
copyrights to "Authors" for their "Writings" for "limited
Times" may still be found not to "promote ... progress." (It
could, in other words, be found not to promote progress either
because it is too strong, or too weak, despite its terms being
"limited.") The "promote ... progress" requirement, under this
view, is an additional constraint on the Copyright Clause
power, requiring a court to articulate a judicially manageable
standard to enforce its limit.
     Petitioners have advanced a different argument: that the
meaning of "limited Times" should be read in light of the
"grant of power" such that only those "Times" that could be
said to "promote the Progress of Science" can be considered
"limited Times" for purposes of the Copyright Clause.  Under
this view, the "grant of power" does not constitute an
additional constraint beyond the textual constraints in the
Copyright Clause, but instead helps inform the interpretation
of those other textual constraints.
     The D.C. Circuit did not address whether the Necessary and
Proper Clause would justify the CTEA under petitioners'
reading of the "grant of power." Nor could the Necessary and
Proper Clause justify the CTEA under petitioners' reading of
the clause.  As this Court has recognized in Printz v. United
States, it is not "proper" to read the scope of Congress's power



                                8

to extend in a way that is inconsistent with the Constitution's
text properly interpreted.  521 U.S. 898, 924 (1997) (citing
Lawson & Granger, The "Proper" Scope of Federal Power:
A Jurisdictional Interpretation of the Sweeping Clause, 43
Duke L.J. 267, 297-326, 330-333 (1993)).  If, as petitioners
assert, "limited Times" should be read to exclude retrospective
extensions because retrospective extensions could not
"promote" anything, then the Necessary and Proper Clause
cannot be relied upon to invert that interpretation of "limited
Times." 
III. THE GOVERNMENT'S REMAINING
        ARGUMENTS ON THE MERITS MUST FAIL
     1. The government suggests that the implied constraints on
Congress's copyright power derive from the possessive "their"
in the Copyright Clause when attached to "Authors" and
"Writings."  (Opp. 14.)  While this argument might well
explain the "originality" requirement of Feist Publ'ns v. Rural
Tel. Ser. Co., 499 U.S. 340, 345 (1991), it cannot explain the
holdings of Graham, 383 U.S. at 6, and Bonito Boats, Inc. v.
Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989), that
Congress cannot remove works from the public domain.
Works in the public domain plainly have "Authors." There is
no reason, then, on the government's account, why Congress
could not extend copyrights to such "Authors" for "their"
"Writings." The constraint of Graham forbidding such an
extension must therefore arise elsewhere. 
     2. The government argues that the framers' initial
copyright statute demonstrates that they intended Congress to
have the power to perpetually extend the term of existing
copyrights.  (Opp. 15.)  The government is correct that the
first statute extended copyrights to works "already printed."
Act of May 31, 1790, ch. 15, 1, 3, 1 Stat. 124-25.  But it does
not follow that the First Congress thereby intended to extend
the  term of any copyright.  In 1790, there was still an
important uncertainly about whether copyrights were



                               9

protected by common law, or whether they were solely a
creation of positive law.  Wheaton v. Peters, 33 U.S. (8 Peters)
591 (1834) (rejecting common law copyright but
acknowledging differing views).  If copyrights were protected
by common law, then the effect of the 1790 statute would be
to terminate that common law right and restrict the resulting
term to the term of the federal statute.  The same would be true
for state copyrights.  Federal terms could well have been less
than the remaining state terms, and there is nothing to indicate
that Congress intended to extend those state terms. 
     The better view of the 1790 statute is that it resolved a
transitional problem created by the enactment of a federal
power protecting copyrights, in light of the spotty protection
granted by states.  See Lyman Ray Patterson, COPYRIGHT IN
HISTORICAL PERSPECTIVE 181 (1968).  Congress's additional
requirement that authors of works "already printed" must
register their works to obtain the benefit of the federal
copyright buttresses petitioners' claim that the framers were
not granting Congress the power to extend copyright
regardless of whether it "promoted ... progress."  See Act of
1790, supra, 3. 
     3. Finally, the government cites this Court's decision in
McClurg v. Kingsland, 42 U.S. (1 How.) 202, 206 (1843), as
authority for the proposition that Congress has the power to
extend existing terms.  As the government states, "this Court
had made it `plain' that Congress has the power `to amplify
the terms of an existing patent.'"  (Opp. 9, citing McClurg.)
But McClurg did not address a term extension.  It upheld a
statute that "authorized the issuing [of] a new patent, when an
original one was invalid by accident, inadvertence, or mistake,
and without any fraudulent intent...."  42 U.S. at 207.  The
equitable power to correct mistakes in the administration of
the patent office cannot ground a general power to extend the
terms of all existing copyright terms. 



 10

IV. IMMEDIATE RESOLUTION OF THESE ISSUES
          IS REQUIRED TO AVOID ENORMOUS HARM.
  As the briefs from Amici Internet Archive and American
Association of Law Libraries et al. demonstrate, the cost of
delaying resolution of the questions raised in this case is
enormous.  Despite the unsubstantiated assertions of the
government, Amici offer direct evidence of the loss of film
and other creative work that will flow from the perpetual
extension of copyright.  As Amicus American Association of
Law Libraries et al. argues, the overwhelming majority of
restored films, for example, were only restored after they
entered the public domain.  (Amicus AALL 19-20.)  The
practice of copyright holders has not been to protect and
preserve this work generally.  Instead, copyright regulation
has put a great deal of this work effectively out of public
reach.
  In other copyright act contexts, this Court has recognized
the importance of a speedy resolution of Copyright Clause
questions.  In New York Times v. Tasini, supra, for example,
this Court granted review in light of the dangers to speech that
delay would produce, despite the absence of any direct
conflict in that case.  Petitioners suggest that the same concern
should guide the Court here.  Congress has abandoned the
framers' plan of requiring that work pass into the public
domain after a "short interval." Joseph Story, COMMENTARIES
ON THE CONSTITUTION OF THE UNITED STATES  502, at 402
(R. Rotunda & J. Nowak eds., 1987).  Given the possibilities
of digital production as described by Amicus Internet Archive,
this change in the framers' practice now threatens to obliterate
a great deal of our common culture.  In light of the ongoing
conflict among the circuits, there is no good reason for the
Court to wait to resolve the questions presented by this case.
                         CONCLUSION
          The petition for writ of certiorari should be granted.



 11


                             Respectfully submitted,


GEOFFREY S. STEWART           LAWRENCE LESSIG
DANIEL H. BROMBERG               (Counsel of Record)
H. BRIAN HOLLAND             CENTER FOR INTERNET &
JONES, DAY, REAVIS &              SOCIETY
    POGUE                    Stanford Law School
51 Louisiana Avenue, N.W.    559 Nathan Abbott Way
Washington, D.C. 20001       Stanford, CA 94305
(202) 879-3939               (650) 736-0999

                             CHARLES R. NESSON
                             JONATHAN L. ZITTRAIN
                             THE BERKMAN CENTER 
                                 FOR INTERNET & SOCIETY
                             1563 Massachusetts Avenue
                             Cambridge, MA 02138
                             (617) 495-7547


December 20, 2001