Bootlegged Performances: Which Constitutional Clause Applies?

This article continues the theme of an article I wrote in late 2004 concerning U.S. v. Martignon, 346 F. Supp. 2d 413 (S.D.N.Y. 2004), in which the district court for the Southern District of New York found that 18 U.S.C. '2319A (the 'anti-bootleg statute') was unconstitutional on the ground that Congress had exceeded its delegated power to legislate copyright law when it enacted the statute. My previous article observed that Martignon implicated several important and fundamental public policies in reaching its decision, among which are the protection of intellectual property, constitutional limits on congressional power to enact laws, freedom of expression as protected by the First Amendment, and the necessity of laws threatening a citizen's liberty to be definite and within a legitimate ambit of congressional authority to act.

The Second Circuit Court of Appeals decided the appeal in U.S. v. Martignon, 2007 WL 1695089 (2d Cir. June 13, 2007), this past June and has now issued a ruling that underscores the clash of fundamental policies that this case presents. As this article describes, the Second Circuit reversed the district court, finding that the Constitution does indeed legitimate Congress' legislative exercise to extend criminal penalties against bootleg recorders of live performances.

The Anti-Bootleg Statute

The path of this legislative enactment is easy to recite. No federal protection existed for the unrecorded live performance of musicians prior to 1994, although various state laws had been passed, but generally only in those states where live performances of prominent artists were frequent. The absence of federal protection against bootleg recording made enforcement efforts somewhat random. In 1994, Congress enacted 18 U.S.C. '2319A, to comply in part with the Uruguay Round of Multilateral Trade Negotiations, and TRIPS, under which all WTO countries are required to extend intellectual property protection to live musical performances. Specifically, 18 U.S.C. '2319A prohibits the unauthorized recording of live performances, as well as the copying, distribution, sale, rental, and trafficking of phonorecords of such performances.

The anti-bootleg statute is straightforward. It imposes criminal penalties for the unauthorized recording of live performances. The issue on appeal was whether the district court had correctly determined that the constitutional grant of power to legislate copyright 'for limited Times' barred the passage of the anti-bootleg statute, which appeared to grant protection for an unlimited duration. An overarching issue, critical to the Second Circuit's decision, was whether any other express delegation of constitutional power to Congress to legislate might otherwise authorize the enactment of the anti-bootleg statute and, if so, precisely what impact the language of the Copyright Clause would have over any enactments under other clauses that affect or implicate copyright.

The Case Below

Martignon operated a record business comprised of a store, a catalog service, and a Web site through which he offered the 'unauthorized recordings of live performances by certain musical artists.' Martignon, 346 F. Supp. 2d at 417. Such unauthorized recordings are commonly referred to as 'bootleg' recordings. After being arrested and indicted under 18 U.S.C. '2319A for selling these recordings, Martignon moved to dismiss the indictment on the ground that Congress had exceeded its constitutional authority in enacting the statute. Martignon contended that the statute itself was rooted in copyright law and therefore enacted under the powers granted by the Copyright Clause; and the statute was not a manifestation of commercial regulation, enacted under the Commerce Clause. Martignon had argued that as an exercise of copyright power, the statute's seemingly perpetual protection of live performances was a violation of both the 'limited Times' provision of the Copyright Clause, and the requirement that copyright power be used to protect 'Writings,' which is generally interpreted to mean that copyright protection cannot be attached to anything that is not 'fixed' to a specific tangible medium, as required by 17 U.S.C. '102; Martignon, 346 F. Supp. 2d at 416-417.

The government responded that '2391A was enacted under the power granted to Congress by the Commerce Clause, which provides a more expansive grant of constitutional legislative authority. Under the Commerce Clause, Congress has broad power to regulate commerce 'among the several states,' without apparent temporal or subject matter limitations (U.S. Const. art. I, '8, cl. 3). After classifying the statute as a copyright law, and not a commercial regulation, the district court had held that the statute exceeded the grant of authority of the Copyright Clause, and that the specific limitations in that clause could not be elided by reference to the Commerce Clause's more expansive grant of constitutional enactment authority.

At the time of the district court's ruling, only one other court had addressed the constitutionality of the statue: the Eleventh Circuit in U.S. v. Moghadam, 175 F.3d 1269 (11th Cir. 1999). In, Moghadam, the statute was challenged on the ground that live performances were beyond the Copyright Clause's definition of 'Writings,' as opposed to its 'limited Times' provision. In upholding the constitutionality of the statute as a valid exercise of Congress' Commerce Clause authority, and without deciding that Congress could not have validly enacted the statute pursuant to its Copyright Clause powers, the court concluded, in a very narrow holding, that the anti-bootlegging statute was a valid exercise of Commerce Clause power that was in no way inconsistent with the Copyright Clause. Moghadam, 175 F.3d at 1280 (explaining that extending quasi-copyright protection to unfixed performances 'actually complements and is in harmony' with the Copyright Clause). That court, however, alluded to the possibility that the statute may have been inconsistent with the 'Limited Times' provision of the Copyright Clause, without deciding that issue. Id. at 1274.

The Second Circuit's Ruling

In reversing, the Second Circuit took a different analytical approach to '2319A. Instead of looking to the subject matter of the statute, the court compared the powers granted to Congress by the Copyright Clause with the powers granted by '2319A. While the district court had found that the legislation was enacted to protect intellectual property and thus confined itself within the four corners of the Copyright Clause, the Second Circuit concerned itself with the nature of the legislative exercise. After determining that the statute does not exercise copyright powers, the court held that Congress had the authority to enact '2319A under its powers granted by the Commerce Clause.

The Second Circuit first attempted to determine whether the word 'Writings' in the Copyright Clause was a grant or a limitation of Congressional power. If the term 'Writings' were construed as a grant of power, then '2319A would fall outside the scope of the powers of the Copyright Clause, since it regulates unfixed expression. If 'Writings' were construed as a limitation, then it could limit Congress' authority to extend federal protection to creative works that have not been fixed in a tangible medium. The court determined that the text of the Copyright Clause did not offer guidance as to whether 'Writings' should be construed as a grant or a limitation, and so it moved on to determine whether the anti-bootleg statute was an exercise of other recognizable powers granted by the Commerce Clause. Martignon, 2007 WL 1695089 at *4.

Noting that the Supreme Court has held that Congress may enact legislation under one constitutional provision that it could not have enacted under another, the Second Circuit next acknowledged that the limitations of one constitutional provision may, in very limited circumstances, circumscribe the power granted by another provision. The court determined that even if '2319A were a valid exercise of Congress' Commerce Clause power, it would be unconstitutional if: '(1) the law it enacts is an exercise of the power granted Congress by the Copyright Clause; and (2) the resulting law violates one or more specific limits of the Copyright Clause.' Martignon, 2007 WL 1695089 at *5 (emphasis added). In analyzing the scope of the powers granted by the Copyright Clause, the court looked both at the language of the Clause and the context surrounding its creation. The court determined that the language of the Copyright Clause grants Congress the power to create, bestow, or allocate rights, and that the context of the Clause (gathered from copyright statutes enacted under the Clause) indicated that the Clause granted the power to create or allocate property rights in expression. Id. at *8-*9.

Using these constructions of the meaning and purpose of these clauses, the court then considered whether '2319A was an exercise of the Copyright Clause power to allocate property rights in expression. The court found that the statute was not such an exercise, mainly because it is a criminal statute, enforceable by the government and not by the performer, i.e., it was a public right, not a private right being vindicated by the statute. The court noted that even though the performer has a right to authorize the recording, the statute grants the author neither the right to transfer ownership in anything nor the right to exclude others from the performance (only the government has that power), which are 'two essential sticks in the bundle of rights that are commonly characterized as property.' Id. at *9 (quoting College Savings Bank v. Florida Prepaid Postsecondary Ed. Expense Bd., 527 U.S. 666 (1999)). After concluding '2319A was not an exercise of power granted by the Copyright Clause, the Second Circuit analyzed whether Congress had the power to enact the statute under its Commerce Clause authority. The Court concluded the statute was a valid exercise of the powers granted to Congress under the Commerce Clause because of the 'nexus between bootlegging and commerce.' Martignon, 2007 WL 1695089 at *8.

The decision in this case in effect was reduced to a battle of characterizations. If the anti-bootlegging statute represented an exercise of the type of power granted by the Copyright Clause, then it would be subject to any limitations therein, and probably unconstitutional for the reasons that the district court had found; if not, then the statute would be constitutional under the expansive powers granted Congress by the Commerce Clause. It is important to note that the Second Circuit was careful to state its conclusion was limited to 18 U.S.C. '2319A alone. The court did not reach any other anti-bootlegging provisions, such as 17 U.S.C. '1101, the sister statute that provides for civil penalties for the unauthorized recording of live performances. It accordingly remains to be determined whether '1101 is constitutional under the Second Circuit's analysis. By granting intellectual property rights to the performer, '1101 arguably does not meet the Second Circuit's characterization of the powers delegated by the Commerce Clause.

Frederick Whitmer is a partner at Thelen Reid Brown Raysman and Steiner LLP in New York, where he is a co-chair of the Intellectual Property Litigation Practice Group. Michael Cestaro, an associate at the firm, and Justin Ellis, a summer associate, assisted in the preparation of this article.

This article continues the theme of an article I wrote in late 2004 concerning U.S. v. Martignon , 346 F. Supp. 2d 413 (S.D.N.Y. 2004), in which the district court for the Southern District of New York found that 18 U.S.C. '2319A (the 'anti-bootleg statute') was unconstitutional on the ground that Congress had exceeded its delegated power to legislate copyright law when it enacted the statute. My previous article observed that Martignon implicated several important and fundamental public policies in reaching its decision, among which are the protection of intellectual property, constitutional limits on congressional power to enact laws, freedom of expression as protected by the First Amendment, and the necessity of laws threatening a citizen's liberty to be definite and within a legitimate ambit of congressional authority to act.

The Second Circuit Court of Appeals decided the appeal in U.S. v. Martignon, 2007 WL 1695089 (2d Cir. June 13, 2007), this past June and has now issued a ruling that underscores the clash of fundamental policies that this case presents. As this article describes, the Second Circuit reversed the district court, finding that the Constitution does indeed legitimate Congress' legislative exercise to extend criminal penalties against bootleg recorders of live performances.

The Anti-Bootleg Statute

The path of this legislative enactment is easy to recite. No federal protection existed for the unrecorded live performance of musicians prior to 1994, although various state laws had been passed, but generally only in those states where live performances of prominent artists were frequent. The absence of federal protection against bootleg recording made enforcement efforts somewhat random. In 1994, Congress enacted 18 U.S.C. '2319A, to comply in part with the Uruguay Round of Multilateral Trade Negotiations, and TRIPS, under which all WTO countries are required to extend intellectual property protection to live musical performances. Specifically, 18 U.S.C. '2319A prohibits the unauthorized recording of live performances, as well as the copying, distribution, sale, rental, and trafficking of phonorecords of such performances.

The anti-bootleg statute is straightforward. It imposes criminal penalties for the unauthorized recording of live performances. The issue on appeal was whether the district court had correctly determined that the constitutional grant of power to legislate copyright 'for limited Times' barred the passage of the anti-bootleg statute, which appeared to grant protection for an unlimited duration. An overarching issue, critical to the Second Circuit's decision, was whether any other express delegation of constitutional power to Congress to legislate might otherwise authorize the enactment of the anti-bootleg statute and, if so, precisely what impact the language of the Copyright Clause would have over any enactments under other clauses that affect or implicate copyright.

The Case Below

Martignon operated a record business comprised of a store, a catalog service, and a Web site through which he offered the 'unauthorized recordings of live performances by certain musical artists.' Martignon, 346 F. Supp. 2d at 417. Such unauthorized recordings are commonly referred to as 'bootleg' recordings. After being arrested and indicted under 18 U.S.C. '2319A for selling these recordings, Martignon moved to dismiss the indictment on the ground that Congress had exceeded its constitutional authority in enacting the statute. Martignon contended that the statute itself was rooted in copyright law and therefore enacted under the powers granted by the Copyright Clause; and the statute was not a manifestation of commercial regulation, enacted under the Commerce Clause. Martignon had argued that as an exercise of copyright power, the statute's seemingly perpetual protection of live performances was a violation of both the 'limited Times' provision of the Copyright Clause, and the requirement that copyright power be used to protect 'Writings,' which is generally interpreted to mean that copyright protection cannot be attached to anything that is not 'fixed' to a specific tangible medium, as required by 17 U.S.C. '102; Martignon, 346 F. Supp. 2d at 416-417.

The government responded that '2391A was enacted under the power granted to Congress by the Commerce Clause, which provides a more expansive grant of constitutional legislative authority. Under the Commerce Clause, Congress has broad power to regulate commerce 'among the several states,' without apparent temporal or subject matter limitations (U.S. Const. art. I, '8, cl. 3). After classifying the statute as a copyright law, and not a commercial regulation, the district court had held that the statute exceeded the grant of authority of the Copyright Clause, and that the specific limitations in that clause could not be elided by reference to the Commerce Clause's more expansive grant of constitutional enactment authority.

At the time of the district court's ruling, only one other court had addressed the constitutionality of the statue: the Eleventh Circuit in U.S. v. Moghadam , 175 F.3d 1269 (11th Cir. 1999). In, Moghadam, the statute was challenged on the ground that live performances were beyond the Copyright Clause's definition of 'Writings,' as opposed to its 'limited Times' provision. In upholding the constitutionality of the statute as a valid exercise of Congress' Commerce Clause authority, and without deciding that Congress could not have validly enacted the statute pursuant to its Copyright Clause powers, the court concluded, in a very narrow holding, that the anti-bootlegging statute was a valid exercise of Commerce Clause power that was in no way inconsistent with the Copyright Clause. Moghadam, 175 F.3d at 1280 (explaining that extending quasi-copyright protection to unfixed performances 'actually complements and is in harmony' with the Copyright Clause). That court, however, alluded to the possibility that the statute may have been inconsistent with the 'Limited Times' provision of the Copyright Clause, without deciding that issue. Id. at 1274.

The Second Circuit's Ruling

In reversing, the Second Circuit took a different analytical approach to '2319A. Instead of looking to the subject matter of the statute, the court compared the powers granted to Congress by the Copyright Clause with the powers granted by '2319A. While the district court had found that the legislation was enacted to protect intellectual property and thus confined itself within the four corners of the Copyright Clause, the Second Circuit concerned itself with the nature of the legislative exercise. After determining that the statute does not exercise copyright powers, the court held that Congress had the authority to enact '2319A under its powers granted by the Commerce Clause.

The Second Circuit first attempted to determine whether the word 'Writings' in the Copyright Clause was a grant or a limitation of Congressional power. If the term 'Writings' were construed as a grant of power, then '2319A would fall outside the scope of the powers of the Copyright Clause, since it regulates unfixed expression. If 'Writings' were construed as a limitation, then it could limit Congress' authority to extend federal protection to creative works that have not been fixed in a tangible medium. The court determined that the text of the Copyright Clause did not offer guidance as to whether 'Writings' should be construed as a grant or a limitation, and so it moved on to determine whether the anti-bootleg statute was an exercise of other recognizable powers granted by the Commerce Clause. Martignon, 2007 WL 1695089 at *4.

Noting that the Supreme Court has held that Congress may enact legislation under one constitutional provision that it could not have enacted under another, the Second Circuit next acknowledged that the limitations of one constitutional provision may, in very limited circumstances, circumscribe the power granted by another provision. The court determined that even if '2319A were a valid exercise of Congress' Commerce Clause power, it would be unconstitutional if: '(1) the law it enacts is an exercise of the power granted Congress by the Copyright Clause; and (2) the resulting law violates one or more specific limits of the Copyright Clause.' Martignon, 2007 WL 1695089 at *5 (emphasis added). In analyzing the scope of the powers granted by the Copyright Clause, the court looked both at the language of the Clause and the context surrounding its creation. The court determined that the language of the Copyright Clause grants Congress the power to create, bestow, or allocate rights, and that the context of the Clause (gathered from copyright statutes enacted under the Clause) indicated that the Clause granted the power to create or allocate property rights in expression. Id. at *8-*9.

Using these constructions of the meaning and purpose of these clauses, the court then considered whether '2319A was an exercise of the Copyright Clause power to allocate property rights in expression. The court found that the statute was not such an exercise, mainly because it is a criminal statute, enforceable by the government and not by the performer, i.e., it was a public right, not a private right being vindicated by the statute. The court noted that even though the performer has a right to authorize the recording, the statute grants the author neither the right to transfer ownership in anything nor the right to exclude others from the performance (only the government has that power), which are 'two essential sticks in the bundle of rights that are commonly characterized as property.' Id. at *9 (quoting College Savings Bank v. Florida Prepaid Postsecondary Ed. Expense Bd. , 527 U.S. 666 (1999)). After concluding '2319A was not an exercise of power granted by the Copyright Clause, the Second Circuit analyzed whether Congress had the power to enact the statute under its Commerce Clause authority. The Court concluded the statute was a valid exercise of the powers granted to Congress under the Commerce Clause because of the 'nexus between bootlegging and commerce.' Martignon, 2007 WL 1695089 at *8.

The decision in this case in effect was reduced to a battle of characterizations. If the anti-bootlegging statute represented an exercise of the type of power granted by the Copyright Clause, then it would be subject to any limitations therein, and probably unconstitutional for the reasons that the district court had found; if not, then the statute would be constitutional under the expansive powers granted Congress by the Commerce Clause. It is important to note that the Second Circuit was careful to state its conclusion was limited to 18 U.S.C. '2319A alone. The court did not reach any other anti-bootlegging provisions, such as 17 U.S.C. '1101, the sister statute that provides for civil penalties for the unauthorized recording of live performances. It accordingly remains to be determined whether '1101 is constitutional under the Second Circuit's analysis. By granting intellectual property rights to the performer, '1101 arguably does not meet the Second Circuit's characterization of the powers delegated by the Commerce Clause.

Frederick Whitmer is a partner at Thelen Reid Brown Raysman and Steiner LLP in New York, where he is a co-chair of the Intellectual Property Litigation Practice Group. Michael Cestaro, an associate at the firm, and Justin Ellis, a summer associate, assisted in the preparation of this article.