United States v. Moghadam , 175 F.3d 1269 ( 1999 )

UNITED STATES of America, Plaintiff-Appellee,
v.
Ali MOGHADAM, Defendant-Appellant.
No. 98-2180.
United States Court of Appeals,
Eleventh Circuit.
May 19, 1999.
Appeal from the United States District Court for the Middle District of Florida. (No. 97-53-CR-ORL-18), G.
Kendall Sharp, Judge.
Before ANDERSON, Chief Judge, HULL, Circuit Judge, and HAND*, Senior Circuit Judge.
ANDERSON, Chief Judge:
In 1994, Congress passed a statute criminalizing the unauthorized recording, the transmission to the
public, and the sale or distribution of or traffic in unauthorized recordings of live musical performances. See
18 U.S.C. § 2319A. Appellant Ali Moghadam was convicted of violating that law (herein sometimes referred
to as the "anti-bootlegging statute") after he pleaded guilty to knowingly distributing, selling, and trafficking
in bootleg (unauthorized) compacts discs featuring live musical performances by recording artists including
Tori Amos and the Beastie Boys. The present appeal challenges the constitutional power of Congress to enact
this legislation.1 In the district court, Moghadam moved to dismiss the indictment, arguing that the statute
was unconstitutional because it did not fall within any of the federal legislative powers enumerated in Article
I, § 8 of the Constitution. The government responded that it was constitutional under either the Copyright
Clause or the Commerce Clause. The district court denied the motion to dismiss. The constitutionality of
the anti-bootlegging statute appears to be a question of first impression in the nation. For the reasons that
*
Honorable William B. Hand, Senior U.S. District Judge for the Southern District of Alabama, sitting
by designation.
1
In pleading guilty, Moghdam duly preserved his right to appeal.
follow, and in the limited circumstances of this case, we reject Moghadam's constitutional challenge, and
therefore affirm Moghadam's conviction.
I. BACKGROUND ON THE ANTI-BOOTLEGGING STATUTE
A brief overview of the history of statutory protection for music and musical performances is in
order. Musicians or performers may enjoy copyright or copyright-like protection in three things, which are
important to keep distinct. First, a musical composition itself has been protected by statute under copyright
law since 1831. See 17 U.S.C. § 102(a)(2) (providing that "musical works, including any accompanying
words" are protectable subject matter); Todd D. Patterson, Comment, The Uruguay Round's Anti-Bootlegging
Provision: A Victory for Musical Artists and Recording Companies, 15 Wis. Int'l L.J. 371, 380-83 (1997).
However, for most of the nation's history, sound recordings were not protected. See Patterson, supra, at 380
("The important distinction between the first copyright statutes of 1831 and what would ultimately become
the Sound Recording Act of 1971 is that these early statutes protected the reproduction of musical notation
rather than the reproduction of actual sound."). In 1971, Congress extended copyright protection to sound
recordings. Sound Recording Act of 1971, Pub.L. No. 92-140, 85 Stat. 391;2 see also 17 U.S.C. § 102(a)(7)
(including "sound recordings" in the list of copyrightable "works of authorship"). This meant that persons
who made unauthorized reproductions of records or tapes, which is known as "piracy,"3 could be prosecuted
or face civil liability for copyright infringement. See 17 U.S.C. § 114 (defining the scope of exclusive rights
of the holder of a copyright in sound recordings). The copyright law, especially as amended by further
2
The entire copyright code was subsequently overhauled by the Copyright Act of 1976, Pub.L. No. 94-
553, 90 Stat. 2541, but the new statute carried forward the substance of the Sound Recording Act of 1971.
3
"Piracy," which refers to an unauthorized duplication of a performance already reduced to a sound
recording and commercially released, is conceptually distinct from "bootlegging," which has been defined
as the making of "an unauthorized copy of a commercially unreleased performance." Dowling v. United
States, 473 U.S. 207, 209 n. 2, 105 S.Ct. 3127, 87 L.Ed.2d 152 (1985).
2
statutes,4 went far toward securing the rights of musicians and recording artists to receive fair benefit from
their creative efforts.
However, following passage of the Sound Recording Act of 1971, a void still remained. No
protection at the federal level extended directly to unrecorded live musical performances.5 Therefore, a
bootlegger could surreptitiously record a live musical performance and engage in unauthorized distribution
of the recording or copies thereof, without having violated copyright law. This gap in copyright protection,
exacerbated by the growing market for such bootleg copies, motivated Congress to enact the anti-bootlegging
provision at issue in the instant case.
The anti-bootlegging statute grew out of the Agreement on Trade Related Aspects of Intellectual
Property ("TRIPs"), which has been described as "the highest expression to date of binding intellectual
property law in the international arena." David Nimmer, The End of Copyright, 48 Vand. L.Rev. 1385, 1391-
92 (1995) [hereinafter Nimmer, The End of Copyright ]. TRIPs became law by operation of the Uruguay
Round Agreements Act ("URAA"), Pub.L. No. 103-465, 108 Stat. 4809 (1994), a comprehensive act dealing
with matters of international trade. 18 U.S.C. § 2319A (which corresponds to § 513 of the URAA, 108 Stat.
at 4975), provides, in pertinent part:
(a) Whoever, without the consent of the performer or performers involved, knowingly and for
purposes of commercial advantage or private financial gain—
(1) fixes the sound or sounds and images of a live musical performance in a copy or phonorecord, or
reproduces copies or phonorecords of such a performance from an unauthorized fixation;
4
See Piracy and Counterfeiting Amendments Act of 1982, Pub.L. No. 97-180, 96 Stat. 91 (codified at
18 U.S.C. §§ 2318-2319) (imposing criminal liability for trafficking in counterfeit labels attached to
phonorecords); Record Rental Amendment of 1984, Pub.L. No. 98-450, 98 Stat. 1727 (codified at 17
U.S.C. §§ 109(b), 115(c)) (prohibiting rental of phonorecords to the public for commercial advantage);
Audio Home Recording Act of 1992, Pub.L. No. 102-563, 106 Stat. 4237 (codified at 17 U.S.C. §§ 1001-
1010) (implementing a royalty payment system and a serial copyright management system for digital
audio recording); Digital Performance Rights in Sound Recordings Act of 1995, Pub.L. No. 104-39, 109
Stat. 336 (codified at scattered sections of 17 U.S.C.) (granting public performance rights for digital
transmission of sound recordings).
5
There were and still are, however, numerous examples of statutory protection for live musical
performances at the state level. See, e.g., Fla. Stat. § 540.11(2)(a)(3).
3
(2) transmits or otherwise communicates to the public the sounds or sounds and images of a live musical
performance; or
(3) distributes or offers to distribute, sells or offers to sell, rents or offers to rent, or traffics in any copy
or phonorecord fixed as described in paragraph (1), regardless of whether the fixations occurred in
the United States;
shall be imprisoned ... or fined ... or both....
The URAA also enacted a similar provision establishing civil liability for the same conduct (but omitting the
commercial advantage or private financial gain requirement). See 17 U.S.C. § 1101 (corresponding to § 512
of the URAA, 108 Stat. at 4974). There is little legislative history dealing with either provision because the
URAA was rushed through Congress on fast-track procedures. However, what little legislative history exists
tends to suggest that Congress viewed the anti-bootlegging provisions as enacted pursuant to its Copyright
Clause authority. See 140 Cong. Rec. H11441, H11457 (daily ed. Nov. 29, 1994) (statement of Rep.
Hughes) ("There are a number of changes in copyright that will advance our interests in the area of
bootlegging, which is going to basically protect our country.").
The rights created by the anti-bootlegging provisions in URAA are actually hybrid rights that in some
ways resemble the protections of copyright law but in other ways are distinct from them. See 3 Melville B.
Nimmer & David Nimmer, Nimmer on Copyright § 8E.03[B][1], at 8E-16 [hereinafter Nimmer on Copyright
] ("The unfixed musical performances protected under [URAA] are accorded something approximating, but
not equaling, copyright protection."). For example, although the civil provision is incorporated into Title 17
of the United States Code and borrows the remedies that apply to copyright infringement, neither the civil
nor the criminal provision meshes with the overall structure of the copyright code. See Patterson, supra, at
410-12. Congress could have amended 17 U.S.C. § 102 to include live musical performances in the list of
protectable subject matter, but it did not do so. Likewise, it is unclear whether longstanding concepts
generally applicable to copyright law such as fair use, see 17 U.S.C. § 107, the work-for-hire doctrine, limited
duration, see 17 U.S.C. § 302, and the statute of limitations, 17 U.S.C. § 507(b), carry over to the
anti-bootlegging provisions. See 3 Nimmer on Copyright, supra, § 8E.03[B][2][b], at 8E-13 to 23; see also
4
Susan M. Deas, Jazzing up the Copyright Act? Resolving the Uncertainties of the United States Anti-
Bootlegging Law, 20 Hastings Comm. & Ent. L.J. 567, 599-623 (1998) (providing detailed treatment of the
host of interpretive problems associated with the anti-bootlegging statute); Nimmer, The End of Copyright,
supra, at 1399 ("The provision of the law is so simple ... and the language that Congress legislated so sparse,
that most questions one could ask are simply not addressed in its implementation."). Finally, in contrast to
the six exclusive rights of a copyright owner spelled out in 17 U.S.C. § 106, it appears that the only exclusive
right created by the anti-bootlegging statute is to record and/or re-communicate one's performance.6 For all
of these reasons, the protections that the anti-bootlegging statutes confer on musicians are best described as
"quasi-copyright" or sui generis protections.
II. WHETHER THE ANTI-BOOTLEGGING STATUTE CAN BE SUSTAINED UNDER THE
COPYRIGHT CLAUSE OF THE CONSTITUTION
Our analysis of the constitutionality of § 2319A begins with the Copyright Clause of the United
States Constitution. By that Clause, Congress is empowered "[t]o promote the Progress of Science and the
useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective
Writings and Discoveries." U.S. Const. art. I, § 8, cl. 8.7 This positive grant of legislative authority includes
several limitations. See, e.g., Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 111
S.Ct. 1282, 113 L.Ed.2d 358 (1991) (holding that the word "Writings" in the Copyright Clause allows
Congress to extend protection only to works of authorship that are original). Of these limitations, Moghadam
has relied in the instant case only on the concept of "fixation" which is said to be embedded in the term
"Writings."
6
We raise these complexities only to differentiate between this statute and pure copyright provisions.
Because none of them is implicated by the instant case and Moghadam's conduct falls squarely within the
anti-bootlegging statute, we need not speculate as to the appropriate resolution of these questions.
7
The word "Discoveries" is thought to refer to the counterpart area of patent law. See 1 Nimmer on
Copyright, supra, § 1.08, at 1-66.25 n. 1.
5
The concept of fixation suggests that works are not copyrightable unless reduced to some tangible
form. "If the word 'writings' is to be given any meaning whatsoever, it must, at the very least, denote some
material form, capable of identification and having a more or less permanent endurance." 1 Nimmer on
Copyright, supra, § 1.08[C][2], at 1-66.30 (internal quotation marks omitted); see also Goldstein v.
California, 412 U.S. 546, 561, 93 S.Ct. 2303, 37 L.Ed.2d 163 (1973) ("[W]ritings ... may be interpreted to
include any physical rendering of the fruits of creative intellectual or aesthetic labor."). Of course, the term
"Writings" has been interpreted so broadly as to include much more than writings in the literal sense, or the
lay definition of the word.8 See 17 U.S.C. § 102(a)(4) (pantomimes and choreographic works); id. §
102(a)(6) (motion pictures and other audiovisual works); id. § 102(a)(7) (sound recordings); 1 Nimmer on
Copyright, supra, § 1.08[B], at 1-66.25-26. In fact, since a sound recording qualifies as a "Writing" in the
constitutional sense, Shaab v. Kleindienst, 345 F.Supp. 589, 590 (D.D.C.1972) (per curiam), "it is now clear
that a writing may be perceptible either visually or aurally," 1 Nimmer on Copyright, supra, § 1.08[B], at 1-
66.27. But the fixation requirement seems to have persisted through this expansion. Thus, although in the
modern era the term "Writings" allows Congress to extend copyright protection to a great many things, those
things have always involved some fixed, tangible and durable form. See Goldstein, 412 U.S. at 561, 93 S.Ct.
2303 ("[W]ritings ... may be interpreted to include any physical rendering of the fruits of creative intellectual
or aesthetic labor."); Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58, 4 S.Ct. 279, 28 L.Ed. 349(1884) (defining "Writings" as "all forms of writing, printing, engraving, etching, etc., by which the ideas of
the mind of the author are given visible expression").
Moghadam argues that a live performance, by definition, has not been reduced to a tangible form or
fixed as of the time of the performance. See Nimmer, The End of Copyright, supra, at 1409 ("[N]o
8
Rejecting the notion that the Constitution "embalms inflexibly the habits of 1789," Judge Learned
Hand wrote that the Copyright Clause's "grants of power to Congress comprise not only what was then
known, but what the ingenuity of men should devise thereafter. Of course, the new subject matter must
have some relation to the grant, but we interpret by the general practice of civilized people in similar
fields, for it is not a strait-jacket but a charter for a living people." Reiss v. National Quotation Bureau,
276 F. 717, 719 (S.D.N.Y.1921).
6
respectable interpretation of the word 'writings' embraces an untaped performance of someone singing at
Carnegie Hall."); Susan M. Deas, Jazzing up the Copyright Act? Resolving the Uncertainties of the United
States Anti-Bootlegging Law, 20 Hastings Comm. & Ent. L.J. 567, 570 (1998) ("The most obvious
constitutional departure found in the [anti-bootlegging law] is how [it] extends protection to unfixed material
under the authority of a congressional enactment."). Moghadam argues that, but for the bootlegger's decision
to record, a live performance is fleeting and evanescent.
Because we affirm the conviction in the instant case on the basis of an alternative source of
Congressional power, we decline to decide in this case whether the fixation concept of Copyright Clause can
be expanded so as to encompass live performances that are merely capable of being reduced to tangible form,
but have not been.9 For purposes of this case, we assume arguendo, without deciding, that the above
described problems with the fixation requirement would preclude the use of the Copyright Clause as a source
of Congressional power for the anti-bootlegging statute.
III. WHETHER THE ANTI-BOOTLEGGING STATUTE CAN BE SUSTAINED UNDER THE
COMMERCE CLAUSE OF THE CONSTITUTION
The government contends, however, that the anti-bootlegging statute is permissible legislation under
Congress's Commerce Clause power.10 Congress has the legislative authority "[t]o regulate Commerce with
foreign Nations, and among the several States." U.S. Const. art, I, § 8, cl. 3. The Commerce Clause
empowers Congress to legislate regarding three things: (i) the use of channels of interstate commerce; (ii)
9
We note that the anti-bootlegging statute may be faced with another constitutional problem under the
Copyright Clause. The Clause allows Congress to extend protection to authors only for "Limited Times."
The protection afforded to live performances by § 2319A, however, contains no express time limitation
and would arguably persist indefinitely. However, Moghadam has not preserved this argument, see infra,
and we decline to address the argument in light of our disposition of this case.
10
Congress's failure to cite the Commerce Clause as grounds for § 2319A does not eliminate the
possibility that the Commerce Clause can sustain this legislation. "[T]he constitutionality of action taken
by Congress does not depend on recitals of the power which it undertakes to exercise," Woods v. Cloyd
W. Miller Co., 333 U.S. 138, 144, 68 S.Ct. 421, 92 L.Ed. 596 (1948), and "[i]n exercising the power of
judicial review," we look only at "the actual powers of the national government," Timmer v. Michigan
Dept. of Commerce, 104 F.3d 833, 839 (6th Cir.1997) (emphasis added).
7
instrumentalities and persons or things in interstate commerce; and (iii) intrastate activities that substantially
affect interstate commerce. United States v. Lopez, 514 U.S. 549, 558-59, 115 S.Ct. 1624, 1629-30, 131
L.Ed.2d 626 (1995). Our analysis here focuses on the third category of appropriate legislation. The
applicable test is "whether a rational basis existed for concluding that a regulated activity sufficiently affected
interstate commerce." Id. at 557, 115 S.Ct. at 1629. To survive Commerce Clause scrutiny, § 2319A " 'must
bear more than a generic relationship several steps removed from interstate commerce, and it must be a
relationship that is apparent, not creatively inferred.' " United States v. Wright, 117 F.3d 1265, 1270 (11th
Cir.1997) (quoting United States v. Kenney, 91 F.3d 884, 888 (7th Cir.1996)), vacated in part on other
grounds, 133 F.3d 1412 (11th Cir.), cert. denied, --- U.S. ----, 119 S.Ct. 217, 142 L.Ed.2d 178 (1998).
Because Congress thought it was acting under the Copyright Clause, predictably there are no
legislative findings in the record regarding the effect of bootlegging of live musical performances on interstate
or foreign commerce. Such findings are normally helpful to a court in finding an interstate commerce nexus.
See Cheffer v. Reno, 55 F.3d 1517, 1520 (11th Cir.1995) (upholding statute regarding freedom of access to
abortion clinics under the Commerce Clause and relying on a plethora of specific legislative findings in the
record regarding the effect of violence and physical obstruction on commerce in reproductive health services);
see also United States v. Viscome, 144 F.3d 1365, 1371 (11th Cir.) (holding that "explicit findings that the
proscribed activity in issue substantially affected interstate commerce" are accorded "substantial deference"),
cert. denied, --- U.S. ----, 119 S.Ct. 362, 142 L.Ed.2d 299 (1998). However, the lack of such findings does
not rule out the Commerce Clause as a possible source of legislative authority applicable to the statute under
challenge. Wright, 117 F.3d at 1269. In Lopez, the Court said that although "congressional findings would
enable us to evaluate the legislative judgment that the activity in question substantially affected interstate
commerce, even though no such substantial effect was visible to the naked eye," Lopez, 514 U.S. at 563, 115
S.Ct. at 1632, "Congress normally is not required to make [such] formal findings," id. at 562, 115 S.Ct. at
1631.
8
Section 2319A also contains no jurisdictional element as is commonly found in criminal statutes
passed under authority of the Commerce Clause. That is, there is no requirement that, for example, the
bootleg copies or phonorecords have traveled in interstate or foreign commerce. Just as legislative findings
can help fortify a statute against Commerce Clause scrutiny, a jurisdictional element is helpful because it
ensures that each individual case will necessarily satisfy the required interstate commerce nexus. Lopez, 514
U.S. at 562, 115 S.Ct. at 1631 (noting that express jurisdictional elements "limit [a statute's] reach to a
discrete set of [offenses] that additionally have an explicit connection with or effect on interstate commerce").
However, the absence of such a jurisdictional element connecting the offense to interstate or foreign
commerce does not necessarily mean the Commerce Clause cannot serve as authority. Wright, 117 F.3d at
1269; see also Viscome, 144 F.3d at 1371 & n. 12 (noting that even though Congress had recently amended
statute criminalizing possession of machineguns to include jurisdictional element, that did not necessarily
mean previous version of statute without jurisdictional element exceeded Commerce Clause authority);
United States v. Olin Corp., 107 F.3d 1506, 1510 (11th Cir.1997) ("[A]lthough Congress did not include in
CERCLA either legislative findings or a jurisdictional element, the statute remains valid as applied in this
case because it regulates a class of activities that substantially affects interstate commerce."). The absence
of such a jurisdictional element simply means that "courts must determine independently whether the statute
regulates 'activities that arise out of or are connected with a commercial transaction, which viewed in the
aggregate, substantially affect[ ] interstate commerce.' " Olin Corp., 107 F.3d at 1509 (quoting Lopez, 514
U.S. at 561, 115 S.Ct. at 1631).
Section 2319A clearly prohibits conduct that has a substantial effect on both commerce between the
several states and commerce with foreign nations. The link between bootleg compact discs and interstate
commerce and commerce with foreign nations is self-evident. For example, one of the elements of the
offense is that the activity must have been done "for purposes of commercial advantage or private financial
gain." 18 U.S.C. § 2319A(a). If bootlegging is done for financial gain, it necessarily is intertwined with
9
commerce. Bootleggers depress the legitimate markets because demand is satisfied through unauthorized
channels. Cf. Wickard v. Filburn, 317 U.S. 111, 127-28, 63 S.Ct. 82, 87 L.Ed. 122 (1942) (finding an
interstate commerce nexus sufficient to support federally mandated wheat growing limits in the fact that
farmers who grew wheat for home consumption would not buy wheat in the normal market, thereby
depressing commerce). Generally speaking, performing artists who attract bootleggers are those who are
sufficiently popular that their appeal crosses state or national lines. The very reason Congress prohibited this
conduct is because of the deleterious economic effect on the recording industry.11 The specific context in
which § 2319A was enacted involved a treaty with foreign nations, called for by the World Trade
Organization, whose purpose was to ensure uniform recognition and treatment of intellectual property in
international commerce. The context reveals that the focus of Congress was on interstate and international
commerce.
Moreover, the type of conduct that Congress intended to regulate by passing the anti-bootlegging
statute is by its very nature economic activity, which distinguishes the statute from the Gun-Free School
Zones Act struck down in Lopez, which in criminalizing the possession of handguns within 1000 feet of a
school, "ha[d] nothing to do with 'commerce' or any sort of economic enterprise, however broadly one might
define those terms." Lopez, 514 U.S. at 561, 115 S.Ct. at 1630-31. See also Nimmer, The End of Copyright,
supra, at 1410 n. 155 ("Although [Lopez ] demonstrates that Congress's power under the Commerce Clause
11
The government's brief in the instant case traced the impact that bootlegging of live performances has
on commerce:
The trafficking in bootleg sound recordings results in unjust enrichment of persons who
unfairly appropriate the intellectual property and potential profits of sound recording
companies and artists. The regulated activity thus substantially affects the profitability
and viability of the aggregate sound recording industry. In other words, trafficking in
bootleg sound recordings substantially affects and threatens the continuous interstate
commercial activity generated by the artists and sound recording companies, which incur
significant risks in the nationwide marketing of the fixed sounds of live musical
performances.
Government's Initial Brief at 15.
10
is not infinite, it does not remotely threaten the viability of this trade law, given how close to the core of
economic activity the Uruguay Round Agreements lie."). We hold that the anti-bootlegging statute has a
sufficient connection to interstate and foreign commerce to meet the Lopez test.
The more difficult question in this case is whether Congress can use its Commerce Clause power to
avoid the limitations that might prevent it from passing the same legislation under the Copyright Clause. As
noted above, we assume arguendo that the Copyright Clause could not sustain this legislation because live
performances, being unfixed, are not encompassed by the term "Writings" which includes a fixation
requirement. The government argues that the anti-bootlegging conviction in this case can be sustained under
the Commerce Clause. We turn now to this issue.
In general, the various grants of legislative authority contained in the Constitution stand alone and
must be independently analyzed. In other words, each of the powers of Congress is alternative to all of the
other powers, and what cannot be done under one of them may very well be doable under another. Perhaps
the most prominent example of this principle is Heart of Atlanta Motel, Inc. v. United States, 379 U.S. 241,
85 S.Ct. 348, 13 L.Ed.2d 258 (1964). There, the Supreme Court considered the constitutionality of the public
accommodation provisions of the Civil Rights Act of 1964. The earlier Civil Rights Cases, 109 U.S. 3, 3
S.Ct. 18, 27 L.Ed. 835 (1883), had declared unconstitutional similar provisions of the Civil Rights Act of
1875 because they regulated private conduct beyond the scope of the legislative authority granted by § 5 of
the Fourteenth Amendment. Yet, the Heart of Atlanta Motel Court held, the Civil Rights Act of 1964 was
predicated on the Commerce Clause and possessed sufficient connection to interstate commerce. See Heart
of Atlanta Motel, 379 U.S. at 250, 85 S.Ct. 348. The Court's reasoning illustrates that, as a general matter,
the fact that legislation reaches beyond the limits of one grant of legislative power has no bearing on whether
it can be sustained under another. Id. (concluding that Congress possessed ample power pursuant to the
Commerce Clause, and "we have therefore not considered the other grounds relied upon. This is not to say
that the remaining authority upon which it acted was not adequate, a question upon which we do not pass,
11
but merely that since the commerce power is sufficient for our decision here we have considered it alone");
see also South Dakota v. Dole, 483 U.S. 203, 207, 107 S.Ct. 2793, 97 L.Ed.2d 171 (1987) (holding that
pursuant to the Spending Clause, U.S. Const. art. I, § 8, cl. 1, Congress may condition its appropriation of
money to the states on their agreement to impose restrictions that would be beyond Congress's constitutional
legislative authority to enact directly).
This general approach has been applied in a context involving the Copyright Clause and the
Commerce Clause as alternative sources of Congressional power. The Trade-Mark Cases, 100 U.S. (10 Otto)
82, 25 L.Ed. 550 (1879), involved an 1876 Congressional enactment of a primitive sort of trademark
protection ("1876 Act"), long before the modern-day Lanham Act. Act of Aug. 14, 1876, 19 Stat. 141. This
statute conferred protection on, and prohibited the counterfeiting of, various types of trademarks. The
defendants were criminally prosecuted under the 1876 Act for trying to pass off imitation beverage products
as brand-name by imitating famous trademarks of well-known beverage makers. The defendants challenged
the constitutionality of the 1876 Act, arguing that Congress did not have legislative authority to enact it. As
in the instant case, the government responded by proffering the Copyright Clause and Commerce Clause as
alternative possible bases of legislative authority.
Apparently, just as was the case with the anti-bootlegging statute, Congress labored under the
impression that it was acting pursuant to its Copyright Clause power. The Trade-Mark Cases, 100 U.S. (10
Otto) at 93 ("[U]ntil a critical examination of the subject in the courts became necessary, it was mainly if not
wholly to [the Copyright C]lause that the advocates of the law looked for its support."). Nevertheless, the
Supreme Court held that the Copyright Clause could not sustain the 1876 Act because "[t]he ordinary
trade-mark has no necessary relation to invention or discovery," which were the hallmarks of protectable
subject matter under the Copyright Clause. The Trade-Mark Cases, 100 U.S. (10 Otto) at 94. Trademarks
are inherently commercial; the concept behind the 1876 Act (and modern trademark law) was not to
encourage intellectual and artistic development, but rather to protect businesses from predatory behavior in
12
the marketplace. See id. ("[A trademark] requires no fancy or imagination, no genius, no laborious thought.
It is simply founded on priority of appropriation."). These characteristics made trademarks substantively
different from the material the Congress was constitutionally able to protect pursuant to the Copyright Clause.
A trademark could be registered under the 1876 Act even without any showing of originality. "While such
legislation may be judicious aid ... and may be within the competency of legislatures whose general powers
embrace that class of subjects," the Court held, "we are unable to see any such power in the constitutional
provision concerning authors and inventors, and their writings and discoveries." Id.The Court next considered whether Congress could enact the 1876 Act under the Commerce Clause.
The Court summarized the government's argument at the outset as that "the trade-mark is ... a useful and
valuable aid or instrument of commerce, and its regulation by virtue of the [Commerce C]lause belongs to
Congress." Id., 100 U.S. (10 Otto) at 95. The Court appeared receptive to this argument. However, it must
be remembered that the Trade-Mark Cases predated the New Deal-era expansion of the Commerce Clause.
In the nineteenth century, "there still remain[ed] a very large amount of commerce, perhaps the largest, which,
being trade or traffic between citizens of the same State, [was] beyond the control of Congress." Id., 100 U.S.
(10 Otto) at 96. Unfortunately (but understandably, since Congress had labored under the impression that
it was authorized to enact the 1876 Act under its Copyright Clause power), there was no jurisdictional-type
element in the 1876 Act to ensure that trademark protection would extend only insofar as related to interstate
commerce. See id., 100 U.S. (10 Otto) at 97 ("Here is no requirement that [a person receiving trademark
protection] shall be engaged in the kind of commerce which Congress is authorized to regulate.").
Consequently, the Court ultimately struck down the 1876 Act as not sustainable under either the Copyright
Clause or the Commerce Clause.
Although the 1876 Act did not survive due to the restrictive view of the Commerce Clause prevailing
at that time, the Supreme Court's analysis in the Trade-Mark Cases stands for the proposition that legislation
which would not be permitted under the Copyright Clause could nonetheless be permitted under the
13
Commerce Clause, provided that the independent requirements of the latter are met. Of course, we have
already held that the anti-bootlegging statute satisfies the "substantial effects" test of post-Lopez Commerce
Clause jurisprudence. The analysis in the TradeMark Cases tends to refute the argument that Congress is
automatically forbidden from extending protection under some other grant of legislative authority to works
that may not be constitutionally protectable under the Copyright Clause. Indeed, modern trademark law is
built entirely on the Commerce Clause, see, e.g., Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833,
838 (11th Cir.1983), and we have found no case which suggests that trademark law's conferral of protection
on unoriginal works somehow runs afoul of the Copyright Clause. See Michael B. Gerdes, Comment, Getting
Beyond Constitutionally Mandated Originality as a Prerequisite for Federal Copyright Protection, 24 Ariz.
St. L.J. 1461, 1471 (1992) ("The constitutionality of current federal trademark legislation ... supports the
conclusion that the Copyright Clause does not limit Congress's Commerce Clause power to grant
copyright-like protection.").
A similar analysis was adopted by the Second Circuit in Authors League of America, Inc. v. Oman,
790 F.2d 220 (2d Cir.1986). There, the issue was the constitutionality of 17 U.S.C. § 601, a now-expired
provision designed to protect the domestic book publishing and printing industries by restricting the
importation of copyrighted, nondramatic literary works which were published abroad. The plaintiffs argued,
inter alia, that this statute went beyond Congress's legislative power under the Copyright Clause because of
the introductory language in the Clause which restricts such legislation to that which helps to "promote the
progress of ... useful arts." Section 601, the plaintiffs argued, was essentially protectionist economic
legislation that did not serve that purpose. The Second Circuit responded to this argument as follows:
What plaintiffs' argument fails to acknowledge, however, is that the copyright clause is not the only
constitutional source of congressional power that could justify [§ 601]. In our view, denial of
copyright protection to certain foreign-manufactured works is clearly justified as an exercise of the
legislature's power to regulate commerce with foreign nations.
790 F.2d at 224. The Authors League analysis suggests that the Commerce Clause may be used to
accomplish that which the Copyright Clause may not allow.
14
On the other hand, it might be argued that some of the grants of legislative authority in Article I, §
8 contain significant limitations that can be said to represent the Framers' judgment that Congress should be
affirmatively prohibited from passing certain types of legislation, no matter under which provision. The
Supreme Court touched on such a situation in Railway Labor Executives' Ass'n v. Gibbons, 455 U.S. 457, 102
S.Ct. 1169, 71 L.Ed.2d 335 (1982). Congress had enacted a statute that purported to alter a pending
bankruptcy case by requiring the debtor railroad company's bankruptcy estate to pay $75 million to the
company's former employees. This statute directly clashed with the Bankruptcy Clause, U.S. Const. art. I,
§ 8, cl. 4, which provides that Congress is empowered to pass "uniform" bankruptcy laws, because the law
targeted a particular situation and was anything but uniform. The Court quickly brushed off the possibility
that the legislation could nevertheless be sustained under the Commerce Clause (which contains no uniformity
requirement), stating that "if we were to hold that Congress had the power to enact nonuniform bankruptcy
laws pursuant to the Commerce Clause, we would eradicate from the Constitution a limitation on the power
of Congress to enact bankruptcy laws." Id. at 468-69, 102 S.Ct. 1169. In Railway Labor Executives, the
statute that Congress passed directly conflicted with the uniformity requirement of the Bankruptcy Clause.
Cf. Paul J. Heald, The Vices of Originality, 1991 Sup.Ct. Rev. 143, 168-75 (arguing that Congress would not
be able to circumvent the originality requirement inherent in the term "Writings" in the Copyright Clause by
passing a statute under the Commerce Clause which extended copyright-like protection to unoriginal works).
We note that there is some tension between the former line of cases (Heart of Atlanta, the Trade-
Mark Cases and Authors League ) and the Railway Labor Executives case. The former cases suggest that in
some circumstances the Commerce Clause can be used by Congress to accomplish something that the
Copyright Clause might not allow. But the Railway Labor Executives case suggests that in some
circumstances the Commerce Clause cannot be used to eradicate a limitation placed upon Congressional
power in another grant of power. For purposes of the instant case, we resolve this tension in the following
manner. In resolving this tension and in reaching our conclusion in this case, we undertake a circumscribed
15
analysis, deciding only what is necessary to decide this case, and we reach a narrow conclusion. First, as
described above, we hold the anti-bootlegging statute satisfies the "substantial effects" test of the post-Lopez
Commerce Clause jurisprudence. Second, following the former line of cases (Heart of Atlanta, the Trade-
Mark Cases and Authors League ), we hold that in some circumstances the Commerce Clause indeed may
be used to accomplish that which may not have been permissible under the Copyright Clause. We hold that
the instant case is one such circumstance in which the Commerce Clause may be thus used. It is at this point
that we must resolve the tension with Railway Labor Executives.
Resolving this tension, we take as a given that there are some circumstances, as illustrated by
Railway Labor Executives, in which the Commerce Clause cannot be used by Congress to eradicate a
limitation placed upon Congress in another grant of power.12 For the reasons that follow, we hold that the
instant case is not one such circumstance. We hold that the Copyright Clause does not envision that Congress
is positively forbidden from extending copyright-like protection under other constitutional clauses, such as
the Commerce Clause, to works of authorship that may not meet the fixation requirement inherent in the term
"Writings." The grant itself is stated in positive terms, and does not imply any negative pregnant that
suggests that the term "Writings" operates as a ceiling on Congress' ability to legislate pursuant to other
grants. Extending quasi-copyright protection to unfixed live musical performances is in no way inconsistent
with the Copyright Clause, even if that Clause itself does not directly authorize such protection. Quite the
contrary, extending such protection actually complements and is in harmony with the existing scheme that
Congress has set up under the Copyright Clause.13 A live musical performance clearly satisfies the originality
requirement. Extending quasi-copyright protection also furthers the purpose of the Copyright Clause to
12
We assume arguendo, without deciding, that the Commerce Clause could not be used to avoid a
limitation in the Copyright Clause if the particular use of the Commerce Clause (e.g., the anti-bootlegging
statute) were fundamentally inconsistent with the particular limitation in the Copyright Clause (e.g., the
fixation requirement).
13
In light of our disposition of this case, we need not address the Necessary and Proper Clause, U.S.
Const. art. I, § 8, cl. 18, as a possible source of Congressional power.
16
promote the progress of the useful arts by securing some exclusive rights to the creative author. Finally, with
respect to the fixation requirement, upon which this opinion focuses, although a live musical performance
may not have been fixed, or reduced to tangible form, as of the time the bootleg copy was made, it certainly
was subject to having been thus fixed. Our conclusion that extending copyright-like protection in the instant
case is not fundamentally inconsistent with the fixation requirement of the Copyright Clause is bolstered by
an example from the prior copyright law. If a live performance is broadcast, e.g., by radio or television, and
simultaneously recorded by the performer, any unauthorized recording by a person receiving the broadcast
constitutes copyright infringement of the sound recording or motion picture, notwithstanding that the infringer
actually copied the live performance directly, and not the fixation thereof. This result is based upon the last
sentence of the definition of "fixed" in 17 U.S.C. § 101. That last sentence provides: "A work consisting of
sounds, images, or both, that are being transmitted, is 'fixed' for purposes of this title if a fixation of the work
is being made simultaneously with its transmission." This definition creates a legal fiction that the
simultaneous fixation occurs before the transmission and the unauthorized recording. See H.R. Rep. 94-1476,
at 52-53, reprinted in 1976 U.S.C.C.A.N. 5659, 5665-66; 1 Nimmer on Copyright, supra, § 1.08[C][2], at
1-66.32 ("It is as if one who was dictating live into a tape recorder were overheard and copied at the moment
of dictation. At that moment, the material has become a 'writing,' even if copied simultaneously, rather than
a moment later."). While we are aware that the constitutionality of this aspect of the statute has never been
tested, the ease with which it has been incorporated into the prior copyright law suggests that fixation, as a
constitutional concept, is something less than a rigid, inflexible barrier to Congressional power. Indeed, if
a performer under the prior law could effectively protect a live musical performance, circumventing the
fixation requirement, simply by the device of simultaneous recordation, the anti-bootlegging law seems to
us like more of an incremental change than a constitutional breakthrough. Common sense does not indicate
that extending copyright-like protection to a live performance is fundamentally inconsistent with the
Copyright Clause.
17
For the foregoing reasons, we conclude that extending copyright-like protection in the instant case
is not fundamentally inconsistent with the fixation requirement of the Copyright Clause. By contrast, the
nonuniform bankruptcy statute at issue in Railway Labor Executives was irreconcilably inconsistent with the
uniformity requirement of the Bankruptcy Clause of the Constitution.14
We note that there is another limitation in the Copyright Clause that may be implicated by the
anti-bootlegging statute: the "Limited Times" requirement that forbids Congress from conferring intellectual
property rights of perpetual duration. See Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 16-17, 7 L.Ed. 327, 333
(1829). On its face, the protection created by the anti-bootlegging statute is apparently perpetual and contains
no express time limit; therefore phonorecords of live musical performances would presumably never fall into
the public domain. See Nimmer, The End of Copyright, supra, at 1411 ("[T]he Caruso example of protecting
a work from a century ago and for centuries into the future ... is the antithesis of 'limited times.' "); see also
Goldstein v. California, 412 U.S. 546, 560-61, 93 S.Ct. 2303, 37 L.Ed.2d 163 (1973) (suggesting that a
copyright of unlimited duration would have a tendency to inhibit the progress of the arts). However, because
Moghadam has not challenged the constitutionality of § 2319A on this basis,15 we decline to raise the issue
sua sponte. Thus, we do not decide in this case whether extending copyright-like protection under the
anti-bootlegging statute might be fundamentally inconsistent with the "Limited Times" requirement of the
Copyright Clause, and we do not decide in this case whether the Commerce Clause can provide the source
14
Our holding is limited to the fixation requirement, and should not be taken as authority that the other
various limitations in the Copyright Clause can be avoided by reference to the Commerce Clause.
Compare Nimmer, The End of Copyright, supra, at 1413 (decrying that Congress may "jettison Feist " by
analogy to the URAA because "[w]hy is a telephone book any further afield than a performance at
Carnegie Hall?"), with Gerdes, supra, at 1461 (proposing that Congress legislatively overrule Feist and
extend copyright protection to unoriginal works by relying on the Commerce Clause).
15
Moghadam did not make this argument in the district court or in his brief on appeal. He fleetingly
mentions the "Limited Times" requirement for the first time in his reply brief on appeal, and even then
does not argue that extending copyright-like protection in this case pursuant to the Commerce Clause
would be prohibited by an inconsistency with the "Limited Times" requirement of the Copyright Clause.
The government has not had any opportunity to present a defense to such an argument, and it would be
unfair to entertain the argument at this late date.
18
of Congressional power to sustain the application of the anti-bootlegging statute in some other case in which
such an argument is preserved. We reserve those issues for another day.
Summarizing our narrow holding in this case, we assume arguendo, without deciding, that the
anti-bootlegging statute cannot satisfy the fixation requirement of the Copyright Clause; we hold that the
statute satisfies the "substantial effects" test of the post-Lopez Commerce Clause jurisprudence; we hold that
the Commerce Clause can provide the source of Congressional power in this case because the extension of
copyright-like protection here is not fundamentally inconsistent with the fixation requirement of the
Copyright Clause;16 and thus under the circumstances of this case,17 we reject Moghadam's constitutional
challenge to his conviction.
IV. CONCLUSION
For the foregoing reasons,18 the judgment of the district court is AFFIRMED.
16
Because we find no such inconsistency, we need not decide the consequences if there were
inconsistency. See note 12, supra.
17
As noted above, Moghadam has waived any constitutional challenge based on the "Limited Times"
requirement of the Copyright Clause, and thus our holding in this case is further narrowed by the fact that
we do not address potential arguments based on the "Limited Times" requirement.
18
We reject Moghadam's other arguments on appeal without need for discussion.
19