Behind the Deal: Drafting the Anti-Bootlegging Law

The federal anti-bootlegging law, which makes the unauthorized recording, transmission and distribution of live musical performances a crime, was struck down Sept. 24 by a District Court in New York.

The federal anti-bootlegging law, which makes the unauthorized recording, transmission and distribution of live musical performances a crime, was struck down Sept. 24 by a District Court in New York.

The judge dismissed federal charges against Jean Martignon, who was arrested in September 2003 after an investigation revealed that he was selling unauthorized recordings of live performances.

The court held that the law violates the limited power Congress has to enact legislation protecting copyrights.

In an unusual footnote, the court credited two second-year law students, interning for Judge Harold Baer Jr., for providing "substantial assistance in the research and drafting of the opinion," which focuses on the legislative intent of the statute.

Rather than reviewing legislative reports, ELW went straight to the source on Oct. 8 to speak with the man who drafted the law, William Patry, a partner with Thelen Reid & Priest in New York. He is one of the foremost copyright scholars in the nation.

The following provides a glimpse of the past, explores the court's opinion and offers possible consequences of the decision.

The Statute:

The federal anti-bootlegging statute, as the court noted, grew out of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), part of the Uruguay Round of trade negotiations among 111 nations in 1994. All who signed the treaty were obligated to adopt legislation in their countries to implement it.

In the United States, Congress could enact the laws only if the U.S. Constitution granted power to do so under one of its provisions.

For example, the Copyright Clause authorizes Congress to "promote the progress of science and useful arts" by securing for authors the exclusive right to their "writings," but only for a "limited time." Congress enacted the Copyright Act under this clause. The Commerce Clause grants power to "regulate commerce" with foreign nations and among the states, with no restrictions or limitations. The Trademark Act was enacted under this clause.

In analyzing the anti-bootlegging statute, the court questioned whether this law was enacted under the Copyright Clause or the Commerce Clause.

The District Court held that: (1) Congress passed the law under authority of the Copyright Clause; (2) the statute is unconstitutional under the Copyright Clause because it protects live musical performances not protected by copyright; (3) it is also unconstitutional because it does not include a "durational limitation," as required under the Copyright Clause; and (4) even if the law were enacted under the Commerce Clause, Congress was not authorized to pass "copyright or copyright-like legislation" that conflicts with limitations under copyright law.

Copyright Clause or Commerce Clause?

The Copyright Clause protects an author's "writings." This has been interpreted to mean that the work must be fixed in a tangible medium before copyright law protects it.

The court concluded that the law was enacted under the Copyright Clause because: (1) legal writers referred to TRIPs as dealing completely with intellectual property; (2) the plain language of the statute refers to intellectual property by using the phrase "without the consent of the performer or performers involved"; (3) the Senate Report from the Committee on the Judiciary (COJ) states that the purpose of TRIPs is to ensure that enforcement procedures would be available to safeguard intellectual property rights, and it discusses the need to protect sound recordings; (4) Congress placed the civil and criminal anti-bootlegging laws in, respectively, Copyright Title 17 and that portion of Title 18 which deals with copyright, and the civil provision states that bootleggers are subject to civil remedies "under the Copyright Act."

Patry disputes this conclusion. When TRIPs was signed in 1994, he was copyright counsel to the U.S. House of Representatives, Committee on the Judiciary. He had practiced copyright law for 13 years, drafted previous copyright legislation and written many articles on copyright.

The Recording Industry Assn. of America approached him and said there was an obligation under TRIPs to provide a way to stop distribution of unauthorized recordings of live performances, Patry recalls. Although state laws prohibited these recordings, many bootlegs were made overseas that labels had to stop from entering the United States. U.S. Customs, however, would stop only goods that federal law -- not state law -- prohibited.

Also, the RIAA wanted foreign governments to provide strong protection for U.S. product overseas. Patry was told that a federal statute protecting foreign rights in the United States would make those countries feel more comfortable.

In its opinion, the court recognized that while a recorded musical performance is protected (a sound recording), a live musical performance of the sounds is not.

"We had the concern that a live performance wasn't fixed," Patry says. The Eleventh Circuit Court of Appeals "already held that a live performance wasn't protected" under copyright law. Therefore, the law wouldn't be drafted under the power granted Congress by the Copyright Clause.

He believed Congress could legislate under the Commerce Clause, however, since bootlegs posed a threat through sales and distribution between states, which affected interstate commerce.

Although the court's opinion states that the "plain language" of the statute indicates that the law is a copyright law, Patry challenges this finding.

"We put things in the Act so that there was a clear indication that it was not part of the Copyright Act," he explains. For example, the civil statute does not subject bootleggers to civil remedies under the Copyright Act, as the court wrote. It states that a party is entitled to the same remedies "as if" it was a copyrighted work. If Congress intended the remedies to be those granted to copyright holders, he says, then there would be no need to include the phrase "as if."

Patry also asserts that placement of the law under the Copyright Titles is irrelevant. "Judge Baer thought that was significant, but it wasn't. Where you put something in the code doesn't mean anything. You ask, 'Where's the most convenient place?'"

The law appears in those sections, Patry explains, because "we wanted to use some of the definitions so [the statute] wasn't so long. Other parts in Title 17 aren't part of copyright, like chapter nine, [protection of] semiconductor chips."

Live Recordings & Copyright-Like Legislation:

After deciding that the anti-bootlegging law was created under the Copyright Clause, the court held the law unconstitutional because it attempted to provide copyright-like protection to live performances. "The COJ simply failed to recognize, let alone master, one of the central problems here -- that an unrecorded live musical performance is not writing."

Patry explains: "We knew we could not legislate under copyright law." The first federal trademark statute was held unconstitutional under the Copyright Clause in the 1880s, he says. It was re-drafted under the Commerce Clause "and has been upheld for 125 years."

The court dismissed the prosecution's argument that the Commerce Clause authorizes this statute as it does trademark law. The opinion states that the anti-bootlegging statute "falls squarely within the purview of the Copyright Clause, and therefore, Congress is limited by the restrictions that the Copyright Clause imposes on its power."

The court then went even further, holding that "Congress may not, if the Copyright Clause does not allow for such legislation, enact the law under a separate grant of power, even when that separate grant provides proper authority."

Patry also challenges this holding. "The question is not, 'Can you [prohibit bootlegging] under the Commerce Clause?' The question is, 'Is what you're doing granting a copyright right?' The answer is no."

Since the law doesn't protect a copyright (live performances), Patry contends that the statute is authorized under the Commerce Clause because illegal bootlegging affects the commercial interests of artists, legitimate sound recording owners and others.

No Limit to Duration of Protection:

As an additional finding, the court stated: "The anti-bootlegging statute's failure to impose a durational limitation on its regulation is 'fundamentally inconsistent' with the Copyright Clause's requirement that copyright-like regulations only persist for 'Limited Times.'" It added that this "procures seemingly perpetual protection for performers."

This portion of the opinion is confusing to many lawyers interviewed by ELW.

The court's reference to restrictions for "copyright-like" regulations lacks any legal authority. Copyright regulations regulate only copyrighted works -- not works that are "like" copyrightable works.

Patry also explains that "we made it perpetual because it wasn't a copyrighted work." Trademark protection is perpetual, he notes.

Consequences and Unanswered Questions:

Although other courts do not have to follow this decision, Patry and many other lawyers hope the decision will be appealed. If this holding is affirmed on appeal, what could it mean?

Since the federal Copyright Act pre-empts state laws involving copyright, would state anti-bootlegging laws -- both criminal and civil -- be unenforceable?

While this decision is in limbo before appeals are exhausted, will federal law-enforcement officials in New York refuse to assist the RIAA and others who investigate bootleggers?

If the law is determined to be an attempt to protect intellectual property, the statute could be protecting the musical composition that's being performed. A live public performance of a composition is protected by copyright. Unless the musical composition is being written as the musicians are performing it, that composition has been fixed prior to the live performance. Therefore, the unauthorized recording -- copying -- of that composition as it is performed is a copyright infringement of the musical work.

There will surely be more questions in the coming months. Many lawyers believe the law was clear before this decision. But now? "It's a mess," says Patry, because the court misread and misunderstood the statute as written.