Twenty-three months after oral argument, the Second Circuit has issued its opinion in United States v. Martignon, 2007 WL 1695089 (2d Cir. June 13, 2007), reversing Judge Baer's ruling of unconstitutionality, and upholding 28 USC 2319A(a)(1) and (3). (Section 2319A(a)(2) - the transmission section - and the civil provisions in chapter 11 of title 17 were not addressed). While I am relieved at the outcome (as far as it went), I do not rejoice in the opinion itself: it is as if the second year law students who wrote Judge Baer's opinion were tasked with drafting an opinion coming out the other way.
To recap: in the 1994 GATT implementing legislation, in response to Article 14(1) of TRIPs, Congress added a new chapter 11 in title 17 as well as criminal provisions in title 28 dealing with the unauthorized fixation of live musical performances, as well as the transmission of such unauthorized fixations and sale of physical embodiments of the fixations. These provisions were an exercise by Congress of its power under the Commerce Clause. Congress never for one second believed it was enacting the legislation under the power granted it under the Copyright Clause, and for this reason: it was Congress's judgment, based upon Supreme Court precedent and statements made by the Register of Copyrights during the enactment of the 1976 Act that the term "writings" in the Article I, section 8, clause 8, is limited to fixed works, meaning original works of authorship fixed with the permission of the creator. I know this because I was there and was the principal drafter of the provisions. Textual support for this is found in the statute. Section 1101, in referring to remedies for the civil provisions states that remedies are available "to the same extent as an infringer of copyright." This provision clearly indicates that the act is not a copyright act: if it was, Congress would have simply said that the remedies are those provided for in chapter 5 of title 17.
It is of course possible that Congress could draft something that walks, talks, and looks like a copyright statute, and it is fair enough in such a case to see if, in that event, there is some perceived conflict with Congress's Article I, section 8, clause 8 powers. In the case of the bootleg provisions, the perpetual nature of the protection presented such a perceived conflict. But the perception of a conflict doesn't mean there is one. In the case of the bootleg provisions, there could only be a true conflict if one believes the Supreme Court, Congress, and the Register of Copyrights were wrong that the Constitutional term "writings" requires the authorized fixation of the creator. I was of the view in 1994 and remain of the view that "writings" does require the authorized fixation of the creator. Defendant and his amici, in my view, fundamentally misunderstood the issue in the case and the Constitution by focusing on whether the performance was "original," in the sense of possessing the requisite modicum of creativity. It matters not at all that a performance if fixed with permission would be original. What matters is that to be a writing within the meaning of the constitution, there has to be a fixation, with the permission of the creator. Nor can an unauthorized fixation convert an unfixed performance into a writing: indeed, it is a signal failure of the defendant and his amici that they failed to distinguish between the very act that gave rise to liability - the unauthorized fixation - and the unfixed performance. To them, by engaging in an unauthorized fixation of a performance (or any downstream acts based on the initial fixation), the whole "writings" issue goes away simply by virtue of the unauthorized act. The confused the violation with the performance itself.
How did the Second Circuit deal with this, the central issue? Not at all. The court of appeals never once analyzed the text of the statute. That's a very big omission. The court was interested only in the "dormant" Copyright Clause issue: does the Copyright Clause limit Congress's power to act under the Commerce Clause? Not in all cases, as shown in the case of the trademark act after the Supreme Court held the first act unconstitutional in The Trademark Cases, 100 U.S. 82 (1879). That first act was held unconstitutional because it was believed to have been enacted under the Copyright Clause and extended rights to unoriginal material.
Under the Trademark Cases and Heart of Atlanta Motel, Inc. v. United States, 379 U.S. 241 (1964), the court of appeals drew "the not surprising conclusion that if a statute is outside even the most generalized interpretation of the scope of the Copyright Clause, i.e., it is not a copyright law, it can be regulated under the Commerce Clause." The conclusion is not surprising because it is circular and thus cannot provide any analytical heft. Railway Labor Executives Association v. Gibbons, 455 U.S. 457 (1982) was distinguished on this ground - that the statute at issue there was in truth a bankruptcy statute enacted under the Commerce Clause and one that conflicted with the uniform limitation in the constitutional bankruptcy clause. From Gibbons, the Martignon court of appeals concluded: "Congress exceeds its power under the Commerce Clause by transgressing limitations of the Copyright Clause only when (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. "
This is not much of a test: how does one know if the law is an exercise of a power granted to Congress by the Copyright Clause and whether it violates one of the specific limits in that clause? For example, the Lanham Act prohibits the copying of one's trademark (and that trademark could also be a copyrighted work), with no limit on protection, thereby violating one of the specific limits of the copyright clause. The court of appeals attempts to avoid casting doubt on the Lanham Act by saying it has "additional characteristics that [don't] make it an exercise of Copyright Clause power," footnote 6. But this merely elides the question of what is an exercise of Copyright Clause power. In the case of trademarks one might say that the essence of the right is consumer confusion arising from copying the trademark; in the case of bootlegs, it is the unauthorized fixation of an unfixed work.
Since the court of appeals upheld Sections 2319A(1) and (3), why aren't those sections an exercise of Copyright Clause power? Bizarrely, the court of appeals focused on the word "securing" in that clause. What might that have to do with whether a "writing" needs to be fixed with the authorization of the creator? Nothing, of course. But to the court of appeals (which fatuously described its approach as a "textual approach"), securing means creating, bestowing, or allocating, and therefore "the issue becomes whether Section 2319A creates, bestows, or allocates rights." The answer is obviously, yes. But wait, the answer is no, it doesn't. According to the court "[r]ather than creating a right in the performer him or herself, it creates a power in the government to protect the interest of performers from commercial predations. Section 2319A does not grant the performer the right to exclude others from the performance - only the government can do that. ... Neither may the performer transfer his or her interests under Section 2319A to another. ... Section 2319A only prevents others from doing something without the authorization of the protected person. It may therefore protect the property interests an individual holds by virtue of other laws, but it does not itself allocate those interests. Section 2319A is not a law 'secur[ing] rights,' or is it a copyright law."
One can only express shocked amazement at such an analysis. Under this approach, a civil provision that is blatantly unconstitutional can provide the basis for a constitutionally valid criminal prosecution (and see the lame effort in footnote 7 to avoid the obvious consequence of this). And, under this analysis, the civil provision in chapter 1101 is most assuredly unconstitutional since it does grant a right to exclude others and permits transfer of the right to exclude. One can expect a petition for rehearing en banc and a petition for certiorari to be filed, but to think we waited 23 months for this is depressing enough.
Finally, it should be noted that the court of appeals has given the defendant the chance to argue a violation of the First Amendement: fat chance given the court of appeals' characterization of the statute.