FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

BREWSTER KAHLE; INTERNET 

ARCHIVE; RICHARD PRELINGER;

PRELINGER ASSOCIATES, INC.,

Plaintiffs-Appellants, No. 04-17434

v. D.C. No.  CV-04-01127-MMC ALBERTO R. GONZALES, Attorney

General, in his official capacity as OPINION

Attorney General of the United

States,

Defendant-Appellee. 

Appeal from the United States District Court

for the Northern District of California

Maxine M. Chesney, District Judge, Presiding

Argued and Submitted

November 13, 2006—San Francisco, California

Filed January 22, 2007

Before: Mary M. Schroeder, Chief Circuit Judge,

Jerome Farris and Johnnie B. Rawlinson, Circuit Judges.

Opinion by Judge Farris

889
COUNSEL

Jennifer Stisa Granick, Lawrence Lessig, and Christopher

Sprigman, Center for Internet and Society, Stanford, California, for the plaintiffs-appellants. 

John S. Koppel, Department of Justice, Washington, D.C., for

the defendant-appellee. 

KAHLE v. GONZALES 891
OPINION

FARRIS, Senior Circuit Judge: 

Plaintiffs appeal from the district court’s dismissal of their

complaint. They allege that the change from an “opt-in” to an

“opt-out” copyright system altered a traditional contour of

copyright and therefore requires First Amendment review

under Eldred v. Ashcroft, 537 U.S. 186, 221 (2003). They also

allege that the current copyright term violates the Copyright

Clause’s “limited Times” prescription. 

Arguments similar to Plaintiffs’ were presented to the

Supreme Court in Eldred, which affirmed the constitutionality

of the Copyright Term Extension Act against those attacks.

The Supreme Court has already effectively addressed and

denied Plaintiffs’ arguments. We AFFIRM. 

In March 2004, Plaintiffs Brewster Kahle, Internet Archive,

Richard Prelinger, and Prelinger Associates, Inc. filed an

amended complaint seeking declaratory judgment and injunctive relief. Brewster Kahle and Internet Archive have built an

“Internet library” that offers free access to digitized audio,

books, films, websites, and software. Richard Prelinger and

Prelinger Associates make digital versions of “ephemeral”

films available for free on the internet. Each Plaintiff provides, or intends to provide, access to works that allegedly

have little or no commercial value but remain under copyright

protection. The difficulty and expense of obtaining permission

to place those works on the Internet is overwhelming; ownership of these “orphan” works is often difficult, and sometimes

impossible, to ascertain. 

Prior to 1978, the number of orphaned works was limited

by the renewal requirement. Renewal served as a filter that

passed certain works — mostly those without commercial

value — into the public domain. Along with formalities such

as registration and notice (which have also been effectively

892 KAHLE v. GONZALES
eliminated), renewal requirements created an “opt-in” system

of copyright in which protections were only available to those

who affirmatively acted to secure them. The majority of creative works were thus never copyrighted and only a small percentage were protected for the maximum term. 

The Copyright Renewal Act of 1992, Pub. L. No. 102-307,

106 Stat. 264 (1992), and the Sonny Bono Copyright Term

Extension Act, Pub. L. No. 105-298, 112 Stat. 2827 (1998),

altered the system to one Plaintiffs characterize as “opt-out.”

Among other effects, the CRA and the CTEA eliminated the

renewal requirements for works created between 1964 and

1977. Plaintiffs confine their First Amendment challenge to

the extensions granted to those works. 

Eliminating the renewal requirement dramatically increased

the average copyright term and correspondingly decreased the

number of works currently entering the public domain. The

change is most noticeable for works that have little commercial value and thus, under an opt-in system, provide little

incentive for their creators to renew the copyright. Plaintiffs

characterize this change as altering the “traditional contours

of copyright” and therefore requiring First Amendment

review under Eldred. 

Plaintiffs also argue that they should be allowed to present

evidence that the present copyright term violates the Copyright Clause’s “limited Times”

1

 prescription as the Framers

would have understood it. That claim was not directly at issue

in Eldred, though Justice Breyer discussed it extensively in

his dissent. See Eldred, 537 U.S. at 243. Plaintiffs assert all

existing copyrights are effectively perpetual. 

1The Copyright Clause grants Congress the power “To promote the

Progress of Science and useful Arts, by securing for limited Times to

Authors and Inventors the exclusive Right to their respective Writings and

Discoveries.” U.S. CONST. art. I, § 8, cl. 8. 

KAHLE v. GONZALES 893
Although the Supreme Court recently addressed similar

issues in Eldred, Plaintiffs argue that their specific claims

were not answered — or if they were, only in dicta. They

place particular emphasis on the increased possibilities for

archiving and disseminating expressive content over the Internet and the detrimental impact the change from an opt-in to

an opt-out system has on those efforts. Plaintiffs articulate

policy reasons behind their position; they do not, however,

provide a legal argument explaining why we should ignore

the clear holding of Eldred. 

I

Dismissals under Fed. R. Civ. P. 12(b)(6) for failure to state

a claim are reviewed de novo. Decker v. Advantage Fund,

Ltd., 362 F.3d 593, 595-96 (9th Cir. 2004). Complaints are

only “dismissed for failure to state a claim [if] it appears

beyond doubt that the plaintiff can prove no set of facts in

support of his claim which would entitle him to relief.” Conley v. Gibson, 355 U.S. 41, 45-46 (1957). The court accepts

the complaint’s well pleaded allegations of fact and construes

them in the plaintiff’s favor. Zimmerman v. City of Oakland,

255 F.3d 734, 737 (9th Cir. 2001). 

Plaintiffs assert that the change from discretionary to automatic renewal of copyrights for works created between 1964

and 1977 altered the “traditional contours of copyright protection.” Under Eldred, that may trigger First Amendment

review. 537 U.S. at 221. However, Eldred also upheld the

CTEA, in effect answering Plaintiffs’ challenge. 

[1] Eldred addressed whether extending existing copyrights was constitutionally permissible. The Court observed

that when Congress passed the CTEA, it “placed existing and

future copyrights in parity. In prescribing that alignment, we

hold, Congress acted within its authority and did not transgress constitutional limitations.” Id. at 194. Thus, extending

existing copyrights to achieve parity with future copyrights

894 KAHLE v. GONZALES
does not require further First Amendment scrutiny. Instead,

traditional First Amendment safeguards such as fair use and

the idea/expression dichotomy are sufficient to vindicate the

speech interests affected by the CRA and the CTEA. Id. at

219-20. 

[2] Plaintiffs frame their argument that Congress altered

copyright’s “traditional contours” within the context of

renewal requirements, which, while a “formality,” have a

longstanding and vital role in regulating the amount of works

under copyright. See Stewart v. Abend, 495 U.S. 207, 217

(1990) (“Since the earliest copyright statute in this country,

the copyright term of ownership has been split between an

original term and a renewal term.”). The CRA and the CTEA

did eliminate the renewal requirements and lengthen the term

for works created between 1964 and 1977, but in doing so

they simply placed existing copyrights in parity with those of

future works. Thus, Eldred’s explicit holding that efforts to

achieve parity are constitutionally valid refutes Plaintiffs’

claim that eliminating the renewal requirement should trigger

First Amendment scrutiny. 

[3] Despite Plaintiffs’ attempt to frame the issue in terms

of the change from an opt-in to an opt-out system rather than

in terms of extension, they make essentially the same argument, in different form, that the Supreme Court rejected in

Eldred. It fails here as well. 

II

In addition to their First Amendment claim, Plaintiffs make

the closely related argument that the current copyright term

violates the Copyright Clause’s “limited Times” prescription

by creating a term that “the Framers would have considered

. . . so long as to be effectively perpetual.” (Pet. Br. at 48.)

This second claim overlaps with the first in that the Plaintiffs’

criticism of the elimination of formalities for works created

between 1964 and 1977 is merely another way of saying that

KAHLE v. GONZALES 895
the copyright term is too long — put differently, “effectively

perpetual.” 

[4] Eldred disposes of Plaintiffs’ second argument, as it

did their first. Eldred did not purport to directly address

whether the phrase “limited Times” places substantive limits

on copyright duration. See Eldred, 537 U.S. at 210 n.17 (noting that whether an average copyright duration of ninety-five

years is at the outer boundaries of “limited Times” was not

before the Court). Nevertheless, the Court denied Justice

Breyer’s assertion that the term enacted by the CTEA was

constitutionally impermissible, observing that “[i]t is doubtful

. . . that those architects of our Nation, in framing the ‘limited

Times’ prescription, thought in terms of the calculator rather

than the calendar.” Eldred, 537 U.S. at 210 n.16. Plaintiffs

seize on that phrase as evidence that the Court misunderstood

the Framers’ intent behind the phrase “limited Times.” The

Court’s phrasing in Eldred sacrificed clarity for pithiness: the

calculator and the calendar are merely different ways of measuring economic benefit to authors. 

[5] However, the Supreme Court clearly grasped the role

“limited Times” play in the copyright scheme and the Framers’ understanding of that phrase. In contrast to Plaintiffs, the

Court has long defined “limited Times” by a balancing rather

than an absolute test. See Eldred, 537 U.S. at 205-08; Sony

Corp. of America v. Universal City Studios, Inc., 464 U.S.

417, 429 (1984); Twentieth Century Music Corp. v. Aiken,

422 U.S. 151, 156 (1975) (noting that the “limited copyright

duration required by the Constitution” serves to encourage

authors while eventually bringing their works within the public domain). 

[6] Put differently, the outer boundary of “limited Times”

is determined by weighing the impetus provided to authors by

longer terms against the benefit provided to the public by

shorter terms. That weighing is left to Congress, subject to

rationality review. See Eldred, 537 U.S. at 206-07 (“Congress

896 KAHLE v. GONZALES
passed the CTEA in light of demographic, economic, and

technological changes, and rationally credited projections that

longer terms would encourage copyright holders to invest in

the restoration and public distribution of their works.” (internal citations omitted)). The Court was thus clearly cognizant

of the meaning of “limited Times” when assessing the current

copyright term; it simply reached a different conclusion than

that desired by Plaintiffs. Future extensions may or may not

survive review, but the current term is constitutional. Plaintiffs’ claim therefore was properly dismissed. 

Both of Plaintiffs’ main claims attempt to tangentially relitigate Eldred. However, they provide no compelling reason

why we should depart from a recent Supreme Court decision.

AFFIRMED. 

KAHLE v. GONZALES 897