Friday, January 06, 2006

Now that's a Kiss

As we await the Second Circuit's opinion in the Martignon case (and I await it with great trepidation), all has not been quiet with the bootleg statute (17 USC 1101). Readers will recall that there was a civil challenge in Kiss Catalog, Ltd. v. Passport Int'l Prods., 350 F. Supp.2d 823 (C.D. Cal. 2004), by Judge Rea. Judge Rea's opinion was, in my view, not much more than a warmed-over rehashing of Judge Baer's atrocious handiwork in the Martignon case.

After Judge Rea's opinion, the United States, which was not a party to the Kiss case, and was not aware of it, sought leave to intervene, and then for reconsideration. Judge Rea granted the request and then died. The case was transferred to Judge Dale Fischer, who handed down his opinion on the motion for reconsideration on December 21, 2005. He found the statute to be constitutional.

The opinion began with a whopper of an error which made me worried: that Congress believed it was acting under the Copyright Clause. Whatever one may think of the merits of the provision, that is simply false. There is no doubt we knew we were legislating under the Commerce Clause. Graciously, however, Judge Fischer indicated that "Congress's intent is not dispositive;" he had an obligation to try and save us from ourselves by scouring the Constitution for authority we may have overlooked, like: the Commerce Clause. (That damn Article I is just too long for Congress to have noticed it, I guess).

Sarcasm aside, Judge Fischer did find that the provision is within Congress's Commerce Clause power, especially under Gonzales v. Raich, 125 L.Ed 2195 (2005) and Lopez. He went on to also discuss, in dicta, whether the statute is inconsistent with the Copyright Clause, and agreeing with the Government, held that nothing prohibits Congress from protecting similar things in different ways, "so long as the Constitution allows it do so," discussing Railway Labor Executives, and in any event finding no fundamental conflict because the subject matter of the two statutes is different.

While I wish some court, somewhere will understand that we always knew we were acting under the Commerce Clause, I am very happy with the outcome.


Anonymous said...

The trouble with the new ruling is its rather unconvincing discussion of Railway Labor Executives v. Gibbons. I see no credible way to square the statute's prohibition on distribution (the only provision at issue in KISS and Martignon), which lacks any time limit, with the Copyright Clause. The conflict is very nearly on all fours with Railway Labor Executives v. Gibbon.

Now I've spoken to constitutional law experts who tell me that Railway Labor Executives was wrongly decided. But until the Supreme Court overrules it, I don't see how lower courts can ignore it.

William Patry said...


I see it somewhat differently. To me, railway Labor says you can't pass a non-uniform bankruptcy statute under the Commerce Clause because bankruptcy statutes have to be uniform.
In the case of my much-maligned effort, I would assert what was going on is that we weren't legislating a copyright provision at all, indeed one that could never be a copyright provision because of the lack of fixation. If this is right, it doesn't matter that we banned distribution, because the distribution didn't concern copyright subject matter.

Anonymous said...

I continue to be puzzled by the focus on fixation (or, rather, the absence thereof). Where both Martignon and KISS are concerned, there was fixation. In fact, the distribution provisions of the statute appear to presuppose fixation (how could you distribute something unfixed?). So you have a statute that regulates the distribution of fixed works of authorship without time limit. Sounds like precisely the sort of thing forbidden by the Copyright Clause.

That leaves you squarely in the path of Railway Labor Executives, methinks.

But then again, lower courts make a living dodging inconvenient Supreme Court precedents, so I may just be insufficiently creative in my analysis. :-)

William Patry said...


I think the difference lies in my belief that defendant's unauthorized fixation (the very first act the statute condemns) cannot simultaneously divest the statute of its constitutionality; in other words, if the statute is directed toward unauthorized fixations and that is constitutional, a defendant cannot defeat the constitutionality of the statute by saying, OK the work was fixed without authorization, now it doesn't apply. And to me that holds true for someone like Martignon who didn't fix it but who distributed the physical embodiment of the unauthorized fixation.

Anonymous said...

Your last point raises an interesting question - does the Copyright Clause limit Congress' regulatory power when it aims indirectly at "non-copyright" matters?

If we assume for a moment that a prohibition on unauthorized fixation of performances is constitutional, does it necessarily follow that a prohibition on the distribution of the resulting fixed copies must also be constititional? In other words, it may be constitutional to go after the recordist, but still constitutionally suspect to target distribution of the resulting recordings. (Railway Labor Executives speaks to this, I think, as it would have been OK for Congress to single out the company directly for all manner of special treatment, but the Constitution nevertheless forbade getting at them via nonuniform bankruptcy laws.)

Anonymous said...

The lack of fixation does not seem to necessarily remove these performances from the domain of the Copyright Clause.

It is clear that "Writings" is a limitation on the copyright power - we know at least that it requires originality per Feist. It seems that in addition to requiring originality any reasonable interpretation of "Writings" also requires some embodiment in a tangible medium.

The anti-bootlegging statute regulates works that are not writings because it is regulating works prior to fixation.

I agree that in the case of trademarks such regulation exists without running afoul of the Copyright Clause; but trademarks are distinguishable. The anti-bootlegging statute grants a monopoloy in original works of authroship and it is the province of the Copyright Clause to regulate such monoplies. The statute is granting exclusive rights to creative works. Trademarks, however, are unconcerned with creative property and rather grant a very different sort of right based on the source identification strength of a given mark or dress. Exlcusive rights granted to creative works for the purpose of protecting those creative works should fall squarely under the domain and limitations of the Copyright Clause.

So it seems that rather than removing these works from the domain of the Copyright Clause, the statute squarely violates a limit (Writings) on Congress' power to regulate such works.

Anonymous said...

I have been studying these cases, and one matter continually puzzles me.

The anti-bootlegging statutes, in effect, prohibit the distribution of subject matter which, if fixed, is within the scope of copyright protection. By prohibiting distribution of a concert recording "without the consent of performer" the statutes grant performers exclusive distribution rights by allowing them to choose who they give their consent to. I am having a hard time seeing how this subsection is not copyright-like.

Anonymous said...

One issue has been puzzling me with these anti-bootlegging statutes.

It is generally agreed that the anti-bootlegging statutes protect uncopyrightable subject matter. However, some argue that the Copyright Clause prohibits legislation that restricts the free use of uncopyrightable works.

In other words, it has been argued that when Congress enacts copyright legislation, it creates a dividing line between subject matter whose protection is in the public interest and subject matter which is meant to remain in the public domain. Under this reasoning, the Copyright Clause would not only protect subject matter that falls under the former category, but also prohibit any legislation that prevents the free use of subject matter falling under the latter category.

This argument is bolstered by the Supreme Court case Graham v. John Deere Co., where the Court held that “Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available.”

I was wondering how one can square the anti-bootlegging statutes with this theory of Copyright law. I would imagine that the Luck's Musical Library and Eldred decisions both support the anti-bootlegging statutes since both of those decisions support legislation which removes works from the public domain.

Please let me know what you think.

Anonymous said...

Is the Martignon appeal dead, or is the 2nd circuit really slow in issuing opinions?

Anonymous said...

Has the 2nd Court ruled on the Bootleg Statue? I find no news on it. Your comments of 1/06/06 are the most recent I've run across.

I'm a music graduate student doing a paper on protections for indigineous music recordings. Anything recent on the order of the Enigma case (settled June 1999)?

Matt said...

I just called the Clerk for the 2nd Circuit. As of today (May 9, 2007), a decision is STILL pending. Oral argument took place July 12, 2005. A "28j" letter (apparently some new information submitted by a party) was received by the court in Jan. 2006. And that's it. I specifically asked if the case had been dropped, and the Clerk assured me that the case was simply not decided yet. She also suggested that letters addressed to the panel might get the ball rolling.