Thursday, May 19, 2005

Bootlegs Continued

Thanks for the many fine comments on yesterday's blog. I will use this posting to reply to them (as some requested). I have, however, an unrelated question I would love some feedback on. I have a 4,000 page hard copy (double spaced text, single space footnotes) new treatise on copyright. BNA was going to publish it, but we parted ways over format after 13 chapters were in page proofs. BNA wanted it in two bound hard copy volumes, no looseleaf, bound annual updates, no commitment to ever putting it online, and CD ROM Appendix only (but no CD ROM for the text). I thought that was a bad idea. I have since pitched it to another publisher, and got a good reaction in February. Since then, however, radio silence. I am fed up. As time goes by, the need to update a work that isn't even out yet increases. I am seriously thinking of publishing it myself in a purely on-line format, leaving legal publishers to their dinosaur world. The work would be formatted like a hard copy book and have page numbers. It would be searchable, and you could cut and paste. I would sell it by a flat annual subscription so that a law firm would pay one price and everyone within the firm could use it; ditto a law school and its faculty and students. There would be free updates, probably once a week. Is this a good idea, a good idea but too difficult time-wise and technically? Or a terrible idea. Any comments would be most appreciated. I am particularly concerned with any unwillingness to cite the work in briefs or court opinions. (My idea on having it formatted like a hardcopy book would take care of how to cite it).

On to bootlegs. Aaron Perzanowski takes me to task for supposedly telling only half the story, the fixation part, and not telling the distribution part of the statute. (Martignon was accused of only the latter). I disagree: I carefully set out all three possible violations: fixation, transmission, and distribution; indeed since the transmission prong did not involve a fixation I asked whether that provision might be regarded differently by critics.

Aaron's substantive criticisms involve his statement that live musical performances are "original and expressive." On this ground, he sees no difference between performances fixed with permission and those fixed without permission. He adds a quote from a Supreme Court opinion that writings include any "physical renderings" of creativity. He concludes that because the statute bans selling bootlegs in a physical rendering it is within the Copyright Clause. And because it is perpetual it is unconstitutional.

In my opinion, Aaron confuses a number of important points. First, originality is irrelevant. The bootleg statute doesn't care if a performance is original or not, no more than the trademark statute (another perpetual federal intellectual property statute) cares if a logo or other mark is original or not. More importantly, he confuses the subject matter of the bootleg statute with its violation. The subject matter of the bootleg statute is not the illicit copy; it is the live musical performance. The Act is violated, in one prong, when there is an illicit copy made, but the fact that there is a violation doesn't mean that the violation is what is protected; its not. The subject matter of the Act is an unfixed live musical performance: that's what you have to measure up for constitutionality. And when you do, there is no conceivable way that it falls within the ambit of the Copyright Clause because that Clause is limited to "writings." "Writings" means "fixed" subject matter: unfixed live performances are not writings. The only way to make the subject matter of the bootleg statute a writing is to impermissibly shift the subject matter from what it truly is to what is a violation of the Act.

In my opinion, Aaron further confused this point by positing equivalence between "fixation" and "physical renderings" (as the Supreme Court used that final term.) The two concepts aren't the same. What the Supreme Court meant is that if there is a creative work we are not going to judge the merits of its creativity. Aaron wants the passage to mean that any time someone fixes something, even without permission, there is a "physical rendering," therefore a fixation therefore it falls within the Copyright Clause. That's not what the Supreme Court meant and it would be bad policy. It would mean that if a baseball player's image is photographed without permission and put on baseball cards, the Copyright Act applies and state right of publicity laws are preempted. That's why I said yesterday the professors' brief fails to distinguish between the subject matter and the copy. Aaron's argument is the same; he just adds the additional point that a live musical performance is original, to which I say, so what? The subject matter is not an original work of authorship, and no defendant can make it one by fixing it or distributing an unauthorized fixation.

Brian Carver and Aaron both pointed out an inconsistency in the drafting: since the statute is in title 17, and therefore uses the definition of "fixed" in Section 101, you have an "unauthorized authorized" embodiment. I think they're right and I wish now that we had left the statute in title 15 for that reason (and many others). Brian also says though that in making my fixation swinging door comment I didn't address contrary arguments. I think I did, but apparently not clearly or persuasively enough. Here's my argument: the dormant effect of the Copyright Clause only extends so far as encompassing "writings" since that is the reach of the Clause. It doesn't impact on things that aren't writings. Unfixed live musical performances aren't writings and therefore are unaffected by the Copyright Clause.

To me the dormant argument says, we're not going to let Congress wear the Commerce Clause hat and screw up the Copyright Clause, say by protecting unoriginal works. We do that because if we didn't we would be interfering with the purposes of the Copyright Clause. But since the Copyright Clause has no purpose with respect to unfixed works, nothing Congress does with respect to them can interfere with the Copyright Clause. That's my argument. I accept that others may disagree.

Brian also notes that I didn't talk about the First Amendment issue in the professors' brief. I didn't for two reasons. First, the issue is not particular to bootlegs and applies equally well to fixed copyrighted works. Second, I have never given it any credence with fixed works. I don't think the First Amendment gives others a right to use my speech, where speech is defined as the substantial taking of expression and without an available fair use defense. The courts agree. See furthermore Harper & Row, which expressly adopted my view that if the First Amendment is in play in copyright litigation, then there are important First Amendment values vesting in the author's right to remain silent.

Finally, Brian asks for some more citations to legislative history. I wish they existed. As a fast track bill controlled in the House by the Ways & Means Committee (and its equivalent in the Senate), there was no Judiciary Committee report. Indeed, as I noted in yesterday's post, the Clinton Administration's USTR wanted no hearing, no published bill, a complete blackout. I can't speak for Senators, but I do know that Senate Judiciary staff understood it was a Commerce Clause provision (I spoke with the Senate IP subcommitte's chief counsel almost every day then), and so too did my bosses in the House.

Aside from the constitutionality issue, Anonymous states that it was a mistake not to put a time limit on protection. In hindsight, I agree.

Finally Fred von Lohman (I am a huge fan of his; he has done sterling oral advocacy in the 9th Circuit), asks whether we considered amending the simultaneous fixation provision in the Copyright Act instead. We didn't because it would have required all live performances to be simultaneously transmitted. We knew some were (hence the second prong) but it seemed too much to actually require all of them to be. Plus, we also would have had to amend the definition of "fixed" to include unauthorized fixations . But then we might have avoided the inconsistencies noted above.


Aaron Perzanowski said...

It seems we may be talking past each other here. Nonetheless, I have a few quick responses.

Your claim that the subject matter of 2319A is live performances and not copies doesn't square with the statutory language. While the intent of the drafters of the bill may have been to protect live performances, that doesn't resolve the question. Instead, to determine the subject matter of 2319A we should ask what it is that the statute regulates?

The first half of the disjunction in 2319A(a)(1) punishes one who "fixes the sounds or sounds and images of a live musical performance." It seems fair to say that the this part of the provision has as its subject matter live performances.

The second half of (a)(1) punishes one who "reproduces copies or phonorecords of such a performance." Clearly we aren't regulating a live performance here. By the time a live performance has been recorded and copies made of that recording, there is simply no live performance left to regulate. What the statute covers in this part of (a)(1) and in (a)(3), which prohibits selling and distributing copies or phonorecords, are works of original expression "fixed" in a tangible medium.

Now, you ask why originality matters. It matters because any original expression captured in physical form qualifies as copyrightable subject matter and cannot be regulated in a manner inconsistent with the Copyright Clause. Granted, these copies are not fixations under 101 (regardless of 2319A's use of the term). But the term "fixation" is not equivalent to the idea of "Writings" found in the Constitution. The authorization requirement of the current Copyright Act's definition of "fixation" is a statutory one and does not reflect a limitation on the scope of "Writings." The Court has never held that to qualify as a Writing a work must be committed to tangible form under the authority of the performer. The recordings subject to 2319A, while not fixed, are writings in the constitutional sense. Some would argue that the live performances themselves constitute Writings. As Professor Goldstein has written “performances subject to [federal anti-bootlegging] protection are ‘writings’ in the constitutional sense for, beyond literalism, there is nothing in the mechanical act of fixation to distinguish writings from non-writings.”

You also mention that it would have been a good idea to limit the term of 2319A's protection. Now this, I must admit, truly puzzles me. You could certainly allow the copying, sale, and distribution of unauthorized live recordings after 50 years, as the agreement that gave rise to the statute suggested. But what good would a durational limit do if the statute really protects live performances? After 50 years have gone by, the right to fix a live performance does little good. The moment passed and with it the opportunity to record.

Alan J. Ross said...

I would be first in line to sign up for an annual subscription to your book. I have no problem citing it to courts and I suspect the courts would appreciate the ease of access and use. You might think about a free subscription service for the federal bench -- or not. You may find you are at the forefront of a trend.

Mickey said...

I think the self publishing experiment online is an excellent plan! I assume that the statement that there would be free weekly updates is in the context of an annual subscription. The proven business model is to make your return on the project in the services such as the continuing updates.
A historical note, subscriptions were the original model for book publishing.

William Patry said...

Alan: I meant to add that I would have free subscriptions for the federal courts.

Aaron: I'm not so sure we are talking past each other so much as disagreeing. My point about "writings" and "fixations" was this: the reason we thought we had to legislate under the Commerce Clause was that we interpreted the Copyright Clause as requiring an original work to be "fixed," as defined in Section 101 or otherwise. (I say otherwise because if we were right, the requirement of fixation was always there, before the definition was put in the statute.)

You want something to be a writing under the Constitution solely if it is original, meaning it posseses a modicum of creativity. I say it has be original and fixed. That's why I say you collapsed the two different requirements. In that regard, I note no court has ever upheld federal copyright protection for an unfixed work. Under your approach, there should be lots of opinions so holding and state law for unfixed works would be preempted, an argument you still don't address.

Live musical performances aren't fixed and therefore they can't be writings, and therefore they don't fall within the Copyright Clause. It is simply irrelevant that if fixed they would be considered an original work of authorship.

You also say that there is no live performance left to regulate in the case of the copies sold, rather than the mere act of the unauthorized fixation, but I still think you are confusing the violation with the subject matter. The distinction is critical to the narrow issue we are discussing, which I consider to be "Can Congress protect unfixed works under the Commerce Clause." I say yes, and that that ability is not taken away by the way defendant violates the protected subject matter. Its not true, in my opinion, that there is no live musical performance left to protect. Congress was saying we have this class we want to protect, unfixed performances, and we want there to be a violation of that class by acts x,y, and z. To me, x,y, and z are still regulating live musical performances, and no less so where different parties engaged in x,y, or z.
Thanks for your stimulating comments.

C.E. Petit said...

I have a few cautions regarding the online publication of the book. (Note: I represent authors, including more than a few who have been down this road.)

* One constant problem is telling when someone is quoting from the most-current edition. Since it's trivial to do so, I strongly recommend making page numbers inherently refer to versions, such as "050519.417" (page 417 of the edition updated to 19 May 2005). This is actually slightly less of a problem with paper editions, but not much. It brings back memories of updating USAF regulations, operating instructions, and technical orders… and they're not pleasant memories.

* You might also consider going to a paragraphing or detailed section-numbering scheme instead of direct pagination. An increasing number of courts are using this, and in fact it is the preferred means of citation for everything except extended quotation from a multipage section (and even then should be adequate, given the federal courts' own general inconsistency regarding pinpoint citations to treatises).

* Last, and far from least, self-publishing as you've described does not get rid of the need for people like copyeditors, designers, layout, etc. One of the surest barrier to success is to assume that "all I have to do is PDF print the Microsoft Word document using a nice single-spaced font." It can still be a worthwhile effort—and, in fact, an academic treatise is perhaps the paradigmatic example of an appropriate self-publishing project—but there's more to it than there looks to be.

pfakler said...

The Copyright Clause covers not any writing, and not any original writings, but is limited to the writings of authors. ("by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries"). If the author has not consented to the recording of the performance, I do not understand how that recording could possibly be considered a writing of the author.

Anonymous said...

On the topic of the book. Have you looked into using LaTex. It is a very good markup language for desktop publishing.

Fred von Lohmann said...

First, on the question of self-publishing, I would encourage you to try this experiment. After all, it would usefully distinguish your work from Goldstein and Nimmer, which are currently the "leading" treatises (at least in terms of citation by federal courts).

For an example of electronic publishing done profitably and right, I'd encourage you to contact Adam Engst, publisher at Take Control Ebooks. While its intended audience is Mac users intent on information about software, I think there are more parallels between this audience and lawyers than some might think (need for updated information, etc.). I like section numbers over page numbers for citation, and would encourage the use of a prominent "edition" notice (along with the ability to roll back to earlier editions in order to check earlier citations).

Back to bootlegs, I continue to think that an extension of the "simultaneous fixation" doctrine might provide the tidiest solution (assuming the Second Circuit affirms J. Baer), enabling a performer to get the full panoply of copyright remedies by simply recording the performance (voice recorders are cheap!). This will impose a minimal "opt-in" burden on performers, but I think it grants a counter-vailing benefit, as performers will now own a larger set of copyrights (and hopefully these will be outside the scope of their recording contracts!).

This could be accomplished by amending Section 101's definition of "fixed" so as to eliminate the "transmit" requirement for simultaneously fixed works, and deleting Section 411(b), which creates very bizarre notice requirements as a precondition for suit.

Anonymous said...

A thought on the self-publishing from a non-lawyer: it does seem like a good idea, especially if, as von Lohmann says, it helps distinguish your treatise from the main competitors. But one other possible consideration might be the extent to which your motives are financial versus reputational. IP has become a hot topic now for many outside the legal world, yet few have easy access to the materials to make themselves truly informed. Would you consider offering a version of the treatise online for free, perhaps with stripped-down functionality (no searching, perhaps; only ability to start at the beginning of large sections) targeted at interested laymen who wish to learn from an 'authoritative' source but hardly need the same sort of features legal users would?

Obviously there's a genuine worry here about cannibalizing your own sales, but if that's not an overriding concern for you, perhaps open access might be worthwhile. It might be a lot easier to displace Nimmer among educated layman in that way than to displace him from the law schools and on the bench.

At any rate, good luck with the project! (And thanks for the blog).

cw said...

I am not a lawyer, but it seems to me that copywrite laws refer to the making of copies of original work. A copy of something--by definition--is close to exactly the thing copied. A copy of a book is another book, more or less. A copy of a performance is another performance. A copy of a musical performance would be people on stage with the same insturmentation playing the same notes, more of less. It is exactly the same as a play. You have to pay the author of a play under copywrite laws, in order to perform the play.

cw said...

P.S. I meant to write, copyright, not copywrite. THis is a mental slip I always make.

Anonymous said...

Annex 1C (TRIPS) of the WTO treaty - Section 1: COPYRIGHT AND RELATED RIGHTS

Article 9, § 2: "Copyright protection shall extend to expressions and not to ideas, procedures, methods of
operation or mathematical concepts as such."

Article 14, § 1: "In respect of a fixation of their performance on a phonogram, performers shall have the possibility of preventing the following acts when undertaken without their authorization: the fixation of their unfixed
performance and the reproduction of such fixation."

This suggests that performing and bootlegging are related to copyright. Its just that Congress may not say so...

Perhaps there are cases that support this: imagine an artist suing her record label - OTOH that was like a hen suing the farmer over her eggs.

continental regards,


William Patry said...

Regarding Peter Anonymous's continental regards on TRIPs:

TRIPs doesn't support the argument that the bootleg provision is a copyright provision. The United States is one of the very very few countries in the world that even regards sound recordings as copyright subject matter. The vast majority treat sound recordings under neighboring rights regimes. This is consistent with the Berne convention, which doesn't treat sound recordings as copyrightable subject matter. It is also consistent with TRIPS's terminology, which uses "performers" rather than to "authors." Since sound recordings are not Berne protected, bootlegs of live musical performances are even more remote. Under international law performers aren't authors, so the TRIPS argument is out.
Bill Patry

Stephen said...

Shifting slightly, I always thought that in a common law country "for a limited time" should be subject to the rule against perpetuities.

erik said...

As a computer geek and a soon to be law student, I think it is a great idea!

I guess the first question you should ask your self is: What is your goal? If your goal is money, I am willing to bet you will make more money from the royalties extracted through the traditional method. However, if your goal is increase the knowledge of the legal community then the only way to go is the online subscription model.

Desktop search engines (like Google) coupled with a growing number of digitized legal texts provide a powerful research assistant. Intellectual property is trying to keep pace with the ever changing technology. The book will be in need of revisions before it is ever published, but the subscription model lets it never go out of date. The online model will allow your work to be read by more people in a shorter period of time improving many peoples understanding of copyrights.

Just some random thoughts,

Anonymous said...

Add my endorsement for online publication.

Combining ideas from the responses, I'd definitely date-stamp each page, and allow subscribers access to previous "editions" of each page. This would of course facilitate citation. (To enhance use in briefs when opposing counsel wasn't a subscriber you'd probably have to have something in your subscription license allowing your subscriber to print the applicable section for his/her opponent. That caveat wouldn't apply for the bench if you're providing them free access.)

Also, the comment about providing free online access to the main volume and charging for updates, searching, etc., might be worth thinking about. Print publishers frequently make much more money for updates than they do for the initial publication.

Apologies if I'm just restating the obvious.

law school librarian

K. Matthew Dames said...


I echo others' support for attempting a run at online self-publishing. As a lawyer, librarian, and copyright teacher, I am more than a bit frustrated by publishers' lack of imagination in presenting information via electronic means.

Here's an idea that may not have been expressed. You may want to seek a profit (or at least recoup your costs) by selling print-optimized PDFs of the treatise, while making most of the treatise free online.

One thing that lawyers, law students and legal scholars want (need) to have is the citations. The general public, however, usually doesn't need the citations. You could post a citation-free version of the treatise online, and sell the PDF versions that have citations. Further, you could support this venture by providing a fee-based update service.

There are lots of ways you can present the information in a way that increases the online visibility of the publication, while providing a revenue stream.

Also, you may want to talk to a Lee A. Hollaar about some approaches. Lee published a good book called "Legal Protection of Digital Information" (ironically, with BNA). Lee posted his entire book online for free (see

Remember, most people don't want to read dense text online, and I don't see this changing anytime soon, even for a new generation of scholars and lawyers (who live online). I think there is a viable way for you to gain a competitive edge over other treatises by making your information publicly accessible, all the while making revenue (and perhaps a profit) by presenting that information in a value-added manner.

If you wish to continue exploring ideas on this theme, please feel free to contact me at kmdames at sesogroup dot com.