Is Copyright Content Neutral: Prof. Joshua D. Sarnoff responds to Justice Gautam Patel


In a post that has now gone almost viral, Justice Gautam Patel reflected on the perplexing issue of whether or not copyright is content neutral. Or whether it can be subject to the filter of legality/morality. He asked a series of thought provoking questions in his post.

Prof. Joshua D. Sarnoff, a widely respected professor of law at DePaul University, has now responded to some of the issues raised by Justice Gautam Patel. Prof Sarnoff has written for us earlier as well (here).  He has a long list of coveted accomplishments to his name and his bio can be found here.

The dilemma on law and morality is a centuries-old debate. Even today, jurists have not been able to reach upon a consensus and this will remain so. Though a polar example in the context of this article, one of the prime issues in the Nuremberg trials post-World War II, was pertaining to the trial of Nazi judges who were part of the Nazi justice delivery system. Were they simply performing their roles as they should be or were they supposed to look into the moral content of law as well? If judges examine morality as well, won’t it bring in subjectivity and thereby, debilitate justice-delivery system? These are issues which remain unanswered. These are the murky issues that we hope that Justice Patel and Prof Sarnoff are attempting to get at through this insightful exchange. So here goes: I give you Prof Josh Sarnoff’s response post below:

Is Copyright Content Neutral: The Role of Judges

By: Josh Sarnoff———————————-

As the introduction to Justice Gautam Patel’s blog post indicates, his Honor “is simply focusing on an academic issue and raising a series of questions around it. Socractic style! So please do read, mull and then engage with the queries he raises…”  As an American patent law academic and historian, I have endeavored to do so below (admittedly lacking sufficient knowledge of the particulars of Indian copyright law, constitutional and administrative law, and culture).  But the questions Justice Patel raised are truly not limited to a particular legal system, as a matter of intellectual property law, of constitutional and administrative law, and of the relationship between law and morality.

If one is to use history and comparison to related areas of law – here, grants of rights to exclude others from particular forms of conduct in regard to protected creative activity— then the natural place to start with regard to consideration of morality and rights to prohibit copyright in particular (morally objectionable or legally proscribed) expressions is patent law. The common law as codified in the English Statute of Monopolies placed restraints on the royal prerogative to grant whatever exclusive rights that it wished, almost a full century before regulating “copy” rights in the Statute of Anne. The Statute of Anne distributed more broadly the exclusive franchise to make copies of expressive works, from the centralized control of the Stationer’s Guild to vesting exclusive rights directly in authors (while permitting ownership transfers by authors).  There is a long history of concern in regard to censorship by the state in regard to such centralized control over copy rights, which is relevant later in this discussion.

The 1624 Statute of Monopolies imposed restraints on royal prerogatives granted by letters patent, (Other exceptions to the prohibition on monopoly grants of exclusive rights included, significantly, corporate charters.)   However, the authorized grants of exclusive rights (for “manufactures” as “inventions”) were themselves limited by the language “so as also they be not contrary to the law nor mischievous to the state by raising prices of commodities at home, or hurt of trade, or generally inconvenient.” This language reflects that exclusive rights (under the Statute of Monopolies) have always been subject to some form of policy-based, legislative constraints on their grant.

In the United States (and elsewhere), these policy-based restraints sometimes took on the character of prohibitions based on the lack of “moral utility” of the inventions (actually, based on the social dis-utility of the inventions to which a grant of exclusive rights provided a subsidy).  The moral utility doctrine precluding grants on inventions such as gambling machines, which were thought to be immoral (or “generally inconvenient”), although they were clearly functional. (Note that other policy concerns relating to “mischievous to the state by raising prices of commodities at home, or hurt of trade” remain salient in the current form of failures to work the invention for public benefit, which is the subject of a different post from Professor Basheer – – to which perhaps Justice Patel might also pose some good questions.) This simply illustrates that it is a long-standing historical fact that the moral “content” of the exclusive rights matters, both when legislation expressly discriminates in granting (or conditioning) exclusive rights and when legislation provides a general authorization requiring judicial interpretation not only of the extent but also of both the expressly stated and impliedly included limits of that authorization (even of a single word, as in the United States patent law Section 101 – and its predecessors’ – employment of the word “useful” in addition to “new.”  Further, even where the concern is not tied to particularly statutory language of authorization, the underlying constitutional authority for legislation may impose such “moral” limits on grants of exclusive rights.  Thus, perhaps, patents should be limited to advances in the “useful Arts,” and to grants to “Inventors for their … Discoveries” (as stated in the U.S. Constitution).  For anyone interested in the historical (and American) context of these concerns, I have previously written about the religious and moral origins of the limits on making private property (through patent grants) of  uncreative (non-“inventive”) but highly useful applications of natural and scientific discoveries, which clearly are to be excluded from grants of exclusive rights when claimed “as such” (using the European parlance).   And see, at page 90 et seq.  As I argue in an article I am developing for a conference that I hope will appear in the Houston Law Review within a year, there may be constitutional restrictions based on treating such uncreative applications as discoveries of inventors under the relevant American constitutional provision, but that the constitutional restriction to the “useful arts” is unlikely to limit the expansive scope of the patent system.  What is significant is that the historic, religious morality- and policy-based content concerns continue to have force in the current time, even under differing constitutional and statutory regimes, and thus generate divisive and vocal controversies over patents granting exclusive rights for uncreative applications of new discoveries in science, nature, and intangible ideas.  Such controversies embrace patents on isolated or modified genetic materials, on diagnostic methods applying discovered (or induced) natural correlations, on stem cells or cloned sheep, and on algorithms, software, and business methods.

Turning back to copyrights and expression (rather than patents and invention), the censorship concerns noted above by Justice Patel may raise very difficult and even more troubling issues regarding the treatment of the morality (content) of the creative product (the expressive work) within constitutional systems.  This is particularly the case in jurisdictions that have strong prohibitionson speech restrictions, such as the U.S. First Amendment’s prohibition on regulating speech. However, what the issue of denying copyright protection based on content addresses is not the prohibition on regulating speech itself, but rather is a restriction on the legislative grant of incentives that promote speech (in the form of a subsidy – the legislated grant of property rights that grant legal authority to prohibit third-party speech).  This raises not the direct question of restricting speech, but whether amorality-based content-conscious restriction on the grant of rights to exclude third party speech is an “unconstitutional” condition.  For a good recent discussion of this issue in the context of “offensive” trademarks, see the brief of law professors (of which I was a signatory) in Lee v. Tam, available here

As this discussion should demonstrate, the question of morality-based content restrictions on copyright goes to both the nature of the particular constitutional system and to the actual statutory authorization and conditions for the grant of rights.  But the question is not limited to the issue of whether the constitution or the legislature has expressly or impliedly decided to impose morality-based restrictions on the grant of such rights.  Justice Patel rightly focuses principally on the latter question. Similarly, Justice Patel rightly focuses on the “automatic” nature of the grant (based on fixation), and the ex-post nature of imposing invalidating restrictions on what the legislature apparently may have authorized, which creates a negative implication that the legislature has chosen not to make such morality-based distinctions.

But the ultimate question is not whether the legislature has expressed or implied such restrictions by express or interpreted conditions in the authorizing legislation for such exclusive copyrights.  Rather, the ultimate questions are: (1) whether the legislature has chosen to prohibit the coordinate branches of government from restricting either the recognition or enforcement of such copyrights based on the morality or legality of the content (as such rights are automatic on fixation, although in other contexts such as patents and trademarks such rights require administrative grants); and (2) whether it would be constitutional for agencies or courts to do so. If the administrative copyright offices were to refuse registration on such grounds, arguably that might be within their authority (as either legislative or administrative delegated powers, depending on how one views administrative delegations) as a matter either of policy-making or as a matter of interpretation. Each jurisdiction’s constitutional and administrative law practices in regard to statutory interpretations and administrative governance may vary in this regard.   But the denial of registration will have relatively little significance, unless copyright registration is a prerequisite for enforcement of the exclusive rights and if recourse could be had to other forms of legal protection and enforcement, such as unfair competition based on unregistered content. Thus, the key question is whether the judiciary believes that the legislature has disabled them from making such morality-based content judgments in regard to enforcement or validation of copyrights (to the extent that such judicial authority is permitted by the constitutional system in regard to the regulation of expression). Assuming that the legislature has prohibited judges from invalidating such copyrights as a matter of law, judges might then decide they retained equitable authority to prohibit enforcing such morally objectionable copyrights that lend judicial power to immoral or illegal forms of expression (like many years ago in refusing enforcement of racially restrictive covenants), or even might equitably invalidate such copyrights ex-post, through granting writs such as scire facias.

In short, I encourage judges (in egregious cases, where the immorality or illegality of the expressive content and the morality of the judicial action cannot be easily contested) to engage the legislature by taking such action. They can then see whether the legislature believes that such judicial powers should be denied. Of course, given other areas of conflict within separated powers of government, perhaps this is not the most important area to assert judicial prerogatives and to enforce social morality, even if only by denying subsidies (in the form of exclusive rights) that support and encourage immoral content.  But Professor Basheer and Justice Patel have certainly hit on an important area for further developments, which will (because based on moral judgments and/or illegal expressions) remain highly controversial.

Mathews P. George

Mathews P. George

Mathews is a graduate of National University of Juridical Sciences, Kolkata. His interest in intellectual property was kindled when he bagged the second position in his very second year in the prestigious Nani Palkhiwala Essay Competition on Intellectual Property. Winner of almost a dozen essay competitions in his law school days, he was involved in various research and policy initiatives relating to intellectual property. His stint as a student of Prof. Shamnad Basheer further accentuated his interest in intellectual property.

One comment.

  1. GS Patel

    My thanks to Professor Sarnoff for his thoughtful and thought-provoking response, and, too, his comment below my first piece. I will not attempt to rush into an immediate response to either — there is much that demands reflection and care.

    I have also seen the detailed comment below my piece by Mr Mathew Thomas, and I must thank him too for taking the trouble to formulate it. He says “But a work though original, if founded on illegality/obscenity, doesnot stand and therefore no copyright. Article 19(4) and Sec 292 IPC would come into play. They remain mere (original) works with no copyright, left in public domain, as the law stands and is interpreted today.”

    I confess that I have some difficulty accepting this in the manner in which this is placed. I should hesitate to turn copyright law into a form of quasi-censorship, or to afford copyright protection only to that which conforms. Art and literature are subversive. They should be subversive. That is their purpose — to question, to doubt, to challenge. If, in the course of doing this, they are found not to conform or even to violate some entirely subjective standard of obscenity or vulgarity (there is much I find vulgar in mainstream cinema, yet it passes into general distribution), should they be penalized by stripping them of a protection that, by statute (and statue alone) attaches to a work of originality? Would this not require us to redraw the limits of the statute, introducing the word ‘lawful’ or ‘legal’ into the definition of a work in Section 2(y) or Section 13? (Incidentally, I take it that Mr Thomas’ reference is to Article 19(2) not 19(4) of the Constitution).

    The discussion on obscenity skews the debate, perhaps even trivializes it. Consider instead a film or movie ban imposed for entirely different reasons — political, religious, etc. Does the fact that a work has been banned for these or similar reasons render the work lacking in originality? If it does not, can it denied protection? We should remember that copyright is first and foremost an assertion by the creator — at least in India, copyright registration is not mandatory, and the registration process does not assess the legality of the work. Were it to do so, that might, I suspect, be infinitely more problematic. Could we then say that the *refusal* to grant copyright protection is a “reasonable restriction” on the free speech rights guaranteed by the Constitution?

    The real dilemma is perhaps in how we view the role of judges. Are they to uphold societal norms of ‘decency’ and ‘morality’, all very subjective and often wildly variable from judge to judge (as perhaps the reports of the last two days referencing certain avian species might show) even at the cost of running afoul of a statute that has no reference at all to the legality of the work? Is it permissible to read into the statute a restriction about the works that can enjoy copyright protection? At the same time, I can see any judge feeling bound to honour that which the executive or perhaps even the judiciary exercising power under another statute holds to be ‘illegal’, ‘unlawful’ or ‘ban-worthy’. This is bound to be a difficult and delicate balancing act.

    I am not being facetious here, but let me try and simplify this in the form of an imaginary conversation:

    Creator: Here is my work. It is entirely original. I am entitled to copyright protection.

    Agency: But it is obscene/subversive/seditious/illegal (tick one).

    Creator: So?

    Agency: So you cannot have legal rights over it. Copyright is a legal right. Your work is illegal. Therefore you cannot have copyright.

    Creator: Says who? What part of the Copyright Act says this?

    Agency: Um.

    Creator: What power have you *outside the Copyright Act* to refuse me copyright?

    Agency: Er …

    Creator: I am asserting copyright.

    Agency: We will not let you.

    Creator: You and what army? Let me understand this: because *you* do not approve of my work and have declared it to be (pick one), therefore it is robbed of originality and anyone may copy and use it as he or she wishes?

    I don’t have the answers to this, and I may never do. But this does seem to me to be a very slippery slope and, increasingly, I think it is going to be of growing importance when we have to deal with demands for greater accountability and transparency in public life. The methods used to ‘expose’ illegality and corruption are often themselves illicit; yet they are ‘original’. What would that mean, exactly? Say a person in public life speaks to a reporter. There is material that is on-the-record and material that is off-the-record. If the reporter uses (illicitly) the off-the-record material, is his final write-up denuded of ‘originality’? How? What is the link exactly between content-legitimacy and originality of creation?

    I hope to be able to respond at greater length to Professor Sarnoff shortly, but, as I said, there is much in his article that demands reflection and thought. For that, and for the privilege of being part of an engaging and rewarding discussion, my thanks to the people at SpicyIP.


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