Constitutional Impediments to Protecting the Live Musical Performance Right

(IPRinfo 4/2005)
Michael Landau
Fulbright Scholar & Lecturer, IPR University Center, Helsinki University and Hanken, 
Professor of Law & Director, Intellectual Property, Technology & Media Law Program, Georgia State University College of Law; JD University of Pennsylvania

As markets develop and delivery systems for creative content grow and truly become global in nature, there has been a concerted international effort toward harmonizing the laws that regulate intellectual property rights. 

More governments are becoming parties to various international conventions and treaties. In order to meet the obligations imposed under the agreements and to be in conformity with the laws of other member States, over the last two decades the United States Congress has made numerous major changes to the Copyright Act of 1976.

After holding out for over 100 years, the United States became a signatory to the Berne Convention for the Protection of Artistic and Literary Property (“Berne Convention) effective March 1, 1989. As a result, Congress amended the Copyright Act to eliminate the registration requirement for foreign works, to make the “notice” requirement optional.

Joining the Berne Convention was also the catalyst for enacting the Visual Artists Rights Act of 1990, providing some “moral rights” protection, albeit very limited and applicable only to a set of works defined as “works of visual art.”

As a result of Uruguay Round Agreements Act (“URAA”) signed on December 8, 1994, the United States adopted the Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPS”), became a member of the World Trade Organization (“WTO”), and enacted two very controversial and fundamental changes to the Copyright Act. 

One was the Copyright Restoration Act, codified in Section 104A (17 U.S.C. § 104A) that restored full copyright protection to any works that was still protected in its “source country,” but had fallen into the public domain in the United States owing to the failure to comply with a formality, such as publishing with proper notice, or even failure to file an application for rights to the renewal term. 

Works that had fallen into the public domain through the expiration of the full term of copyright remained in the public domain.

TRIPs Agreement improved the protection of live musical performances

The other major change at the end of 1994 as a result of “URAA” was the creation of a new right to protect live musical performances by enacting statutes providing civil liability (17 U.S.C. § 1101) and criminal sanctions (18 U.S.C. § 2319A) for engaging in the following acts: 1) the unauthorized recording of live musical performances; 2) the unauthorized transmission to the public of live musical performances; or 3) the unauthorized sale and distribution of recordings of live performances. 

Prior to 1994, there was no federal protection to protect live musical performances, although several states had “anti-bootlegging” laws that prohibited the unauthorized recording and sale of live concert tapes. It should be noted that in contrast to the broad definition of “performers” in the WIPO Performance and Phonograms Treaty (“WPPT”), the U.S. statutes apply to only “musical performances”, no other forms of live performances. 

Additional amendments were made to the U.S. Copyright Act in October 1998, either to be in compliance with obligations the WIPO Copyright Treaty (“WCT”), the WPPT, or to be in harmony with the laws of other countries. 

The Digital Millennium Copyright Act (“DMCA”) added the complicated “anti-circumvention” of “technological measures” provisions and related exemptions, provisions regarding the maintenance of digital rights management technology and information, and the “safe harbor” and “notice and takedown” provisions providing ISPs with immunity from liability based upon the infringing acts of third parties. The Sonny Bono Copyright Term Extension Act added 20 years the terms of copyright for both preexisting works and works created after the effective date.

As the legislative arm of a signatory to various international treaties, it would appear as thought Congress had the proper authority amend the Copyright Act with few restrictions, if any. Twenty or thirty years ago the changes probably would have gone unchallenged. There was not a flurry of litigation challenging Congressional authority when the Copyright Act of 1976 came into effect. 

There have always been arguments that the Copyright Act violates the freedom of expression guaranteed by the First Amendment. The courts have dealt with them in a simple manner by holding that First Amendment concerns are inherently addressed by “fair use” and by the “idea/expression merger” doctrine.

In several cases involving the recent amendments, in addition to the usual First Amendment freedom of expression challenge, a different constitutional issue has arisen, namely whether Congress has the authority to enact the legislation at issue under the empowering language contained in Article I, Section 8, clause 8, commonly known as “The Copyright Clause.” The Copyright Clause provides: 

The Congress shall have Power ….To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

Different interpretations of “limited times”

There are actually several grounds on which to challenge legislation in that little clause. The language “To promote the Progress of Science and the useful Arts” has been used to attempt to invalidate any legislation that either does not elevate the level of mankind, or, as in Eldred v Ashcroft, 537 U.S. 186 (2003), the case that unsuccessfully challenged the Copyright Term Extension Act that giving additional years to works that have already been created is not providing the author with any incentive to create, and thus, “promote.” 

In Eldred, it was also argued that the language “for limited Times” prevents Congress from continually extending the length of copyright protection. 

The “limited Times” language was also unsuccessfully asserted in Luck’s Music Library, Inc. v. Gonzales, 407 F.3d 1261 (D.C. Cir. 2005), a case challenging the Copyright Restoration Act. The term “Author” is often raised ownership or “originality” disputes. A violation of the “Writings” limitation is usually raised when a party is challenging whether the subject matter at the center of the controversy is indeed copyrightable subject matter that Congress may regulate.

Although the anti-bootlegging statutes became law in late 1994, there have been very few cases brought under them. The first reported case challenging the constitutionality was a criminal case, United States v. Moghadam, 175 F.3d 1269 (11th Cir. 1999). 

In its opinion, the Court of Appeals for the Eleventh Circuit noted the case seemed to present a question of first impression in the country. In Moghadam, the defendant was convicted of knowingly distributing, selling, and trafficking in bootleg compact disks of live recordings of musical performances including Tori Amos and the Beastie Boys under Section 2319A of Title 18. The defendant appealed. 

Live performance cannot be reduced to a fixed form

The constitutional challenge was based solely on the concept of “fixation,” an offshoot of the “Writings” requirement. Moghadam argued that a live performance, by definition, has not been reduced to a fixed form as of the time of the performance. The more obvious argument, that a statute with no time on the prohibitions violates the “limited Times” mandate was not raised. 

The court avoided deciding the constitutional “fixation” and “Writings” issue, it alternatively held that the enactment of anti-bootlegging statutes was a legitimate exercise of the power granted to Congress under the Commerce Clause, Article I, Section 8, clause 3 of the Constitution because the market for, sale, and distribution of “bootleg” recordings were activities that “substantially effect interstate commerce.” 

Without analyzing any evidence regarding the market or pattern of distribution, the judge simply held that “the link between bootleg compact discs and interstate commerce and commerce with foreign nations is self-evident.”

The judge acknowledged that one clause of Article I may not be used as legislative authority if it is “fundamentally inconsistent” with another. The court was of the opinion that there was no such problem because the “fixation” requirement could be easily met by the performer simultaneously taping herself. It is well established law, at least with respect to live sporting or athletic events, that the fixation requirement is met if the broadcast or transmission is simultaneously taped.

At the end of the opinion, Judge R. Lanier Anderson III essentially castigated the defendant’s lawyers by expressly emphasizing that there might be a “limited Times” problem with the statute that could have been raised, but that the defendant’s counsel did not raise it. 

The court even stated, in dicta, that extending unlimited copyright-like protection under the Commerce Clause might be “fundamentally inconsistent” with the Copyright Clause, but decided to “reserve those issues for another day” “because Moghadam has not challenged the constitutionality of § 2319A on this basis, we decline to raise the issue sua sponte.” 

This raises an interesting ethical question. The Moghadam case was a criminal case, not a civil one, and the punishment carried a possible jail sentence of not more than 5 years. If Judge Anderson felt that there was a solid legal and obvious legal defense to the charge, should a criminal defendant be punished because of his lawyer? Judges raise issues sua sponte often – when they feel like it.

New bootlegging cases have asserted “limited Times” defence

In 2004, there were two more anti-bootlegging cases decided, one criminal case and one civil case. InUnited States v. Martignon, 346 F.Supp.2d 413 (S.D.N.Y. 2004), the owner of Midnight Records, comprising a store in Manhattan, a catalogue service, and an Internet site, was arrested and subsequently indicted by a federal grand jury for violating 18 U.S.C.A. § 2391A, for selling unauthorized recordings of live performances through his business. 

Martignon moved to dismiss the indictment. His lawyers had the advantage of having read the Eleventh Circuit’s Moghadam opinion. In addition to asserting that Section 2319A violated the “Writings” requirement for lack of “fixation”, they followed the Eleventh Circuit’s advice and also asserted a “limited Times” defence.

Judge Baer, of the Southern District of New York, distinguished Moghadam as being a narrow holding because the statute was not challenged on “perpetual protection” grounds. “Not only was this issue not present in Moghadam, but the Moghadam Court all but stated, on several occasions, that had the defendant challenged the statute’s violation of the “Limited Times” provision in the Copyright Clause, the Court may well have come to a different decision about the statute’s validity.” 

The judge held that statute violated the “limited Times” provision by “granting seemingly perpetual protection to live musical performances.” The judge also addressed the “fixation” issue that was avoided by the Eleventh Circuit and held, “by virtue of the fact that the statute regulates unfixed live performances, the anti-bootlegging statute is not within the purview of Congress’ Copyright Clause Power.” 

The Court then addressed whether the legislation prohibiting the recording and selling of “bootleg” recordings could have been enacted under the Commerce powers. In addition to noting that everything in the legislative history, as well as the placement of the corresponding civil statute in the Copyright Act supported the proposition that Congress thought that it was acting under its Copyright powers and not its Commerce authority. 

In contrast to the fixation problem, the perpetual copyright-like protection was found to be so “fundamentally inconsistent” with Copyright Clause’s “limited Times” restriction that the legislation was held to be impermissible under the Commerce Clause, as well. Defendant’s motion to dismiss the indictment was granted.

DVD published 30 years after the concert

In KISS Catalog v. Passport International Productions, Inc., 350 F.Supp.2d 823 (C.D.Cal. 2004), the dispute involved films of a KISS concert made almost thirty years ago. On July 10, 1976, KISS performed at Roosevelt Stadium in New Jersey as part of their “Spirit of ‘76” concert tour. The concert promoter for the Roosevelt Stadium was Metropolitan Talent, Inc. (“Metropolitan”). 

Metropolitan filmed the Roosevelt Stadium performance so that they could project images of the band on screen while the band was performing. After the concert, Metropolitan retained its live recording of the show – for the next thirty years. 

At some time in 2003, Metropolitan entered into a “Stock Footage License Agreement” with Passport that purportedly gave Passport rights to distribute copies of the filmed 1976 Roosevelt Stadium concert to the public. Passport released a DVD of the concert as “KISS: The Lost Concert” and began selling copies in late 2003. In November 2003, KISS filed suit against Passport asserting a variety of trademark and state law claims. The district court issued a preliminary injunction against Passport, which was subsequently reversed by the Ninth Circuit.

In August 2004, KISS filed an amended complaint in order to assert an anti-bootlegging claim under Section 1101(a)(3). In October 2004, they filed a second amended complaint to include claims for copyright infringement, as well. On November 8, 2004, Passport filed motions to dismiss both the copyright and the bootlegging claims. The court held that Plaintiffs had sufficiently set forth a claim for copyright infringement and had registered the work. The Defendants’ motion regarding copyright dismissal was denied.

The defendants first argued that the anti-bootlegging claims must fail because they are inconsistent with the copyright infringement claims. Because Rule 8(e)(2) of the Federal Rules of Civil Procedure permits a plaintiff to plead alternative or inconsistent claims, the anti-bootlegging claim, in light of the copyright infringement claim, was perfectly acceptable.

Defendants then argued that Section 1101, which took effect in late 1994, was prospective in nature, and could not be applied to prevent the sale of a film that was made 20 years prior to its enactment. The court rejected this argument, as well, noting that each subsection can be applied independently. Section 1101(a)(1) applies to making an unauthorized recording; Section 1101(a)(2) applies to making unauthorized transmissions of a live performance; and Section 1101(a)(3) applies to distributing, selling, or offering to sell any unauthorized recording. 

The court rejected the argument that Section 1101(a)(3) inherently includes Section 1101(a)(1), so that only the distribution of unauthorized recordings made after the effective date could trigger liability. The court noted that Congress easily could have included language tying the two together, but it did not do so. The statute was interpreted to continuing the potential and separate violations. 

Therefore, the unauthorized sale after the effective date of a recorded concert that was made prior to the effective date would violate Section 1101(a)(3). To further illustrate, the court pointed out that if one were to make an unauthorized recording after the effective date, and then distribute the recording, both Section 1101(a)(1) and Section 1101(a)(3) would have been violated.

Challenge to Congress

Finally, the issue of the constitutionality of the statutes was addressed. As a threshold matter, it had to be determined whether Section 1101 was “copyright-like” legislation. Based upon the statute’s “language, history, and placement” as well as the language in the Moghadam and Martignon cases, the court concluded that “it was pretty clear that when Congress enacted the anti-bootlegging statute, it believed it was acting pursuant to its Copyright Clause powers.” 

As the Eleventh Circuit did in United States v. Moghadam, the Central District of California also declined to address the “fixation” or “Writing” issue, based upon “other constitutional defects with §1101.” Section 1101, as written, contains no time limit for its protections.

The Copyright Clause is a “constitutional command” directing Congress to design a system that promotes the “Progress of Science and the useful Arts . . .” As the text of the Constitution makes plain, it is Congress that has been assigned the task of defining the scope of the limited monopoly that should be granted to Authors and Inventors. 

The Court held that the current version of the statute creates perpetual copyright-like protection in violation of the “for limited Times” restriction of the Copyright Clause.

Finally, the issue of whether Congress could have been acting under its Commerce Clause authority when it enacted the statute was addressed. 

While conceding that in some cases a piece of legislation may be enacted pursuant to one of several different constitutional grants, the court held that the limitation in the Copyright Clause was so strong that allowing Congress to invoke the Commerce Clause in a situation where the Copyright Clause would otherwise be violated would “eradicate from the Constitution a limitation on the power of Congress . . . Permitting the current scope of the Commerce clause to overwhelm those limitations altogether would be akin to a ‘repeal’ of a provision of the Constitution.” Section 1101, the civil statute, was therefore held to be unconstitutional.

There are now opinions in which both the civil anti-bootlegging statute and the criminal anti-bootlegging statute have been held to be unconstitutional. While one can never accurately predict what other appellate courts will do, given that all of the judges who have contemplated the “limited Times” problem are in agreement — even when the issue wasn’t even raised in the case – it would probably be wise for Congress to amend the statute in the near future.