* The Honorable Nicholas G. Garaufis, United States District Judge f or the Eastern District of New York, sitting by designation. 04-5649 United States v. Martignon

UNIT ED S TAT ES COU RT OF A PP EALS FOR THE SE CON D CIR CUIT

August Term, 2004 (Argued: July 12, 2005 Decided: June 13, 2007) Docket No. 04-5649-cr

UNITED STATES OF AMERICA, Appellant ,

-vJEAN MARTIGNON, Defendant-Appellee

.

Before: POOLER a

nd SACK, Circuit Judges , and GARAUFIS, Dist rict J udge

. *

The government appeals an orde r of the United States District Court for the Southern District of New York (Harold G. Bae r, Judge ) dismissing an indictment against defendant Jean Martignon. The indictment charged violation of the distribution and re production provisions of2

the criminal anti-bootlegging statute, 18 U.S.C. § 2319A(a) (1),(3). The district court held that Congress lacked power to promulga te this statute under either the Copyr ight or Commerce Clauses of the United States Constitution. See U.S. Const. art. I, § 8, cls. 3, 8. Vacated and remanded.

SAMIDH GUHA, Assistant United States Attorney for the Southern District of New York (David N. Kelley , United States Attorney for the Southern District of New York, Peter G. Neiman, Assistant United States Attorney, on the br ief), New York, NY, for Appellant

. DAVID E. PATTON, The L egal Aid Society

Federal Defender Division Appea ls Bureau (Yuanchung L ee on the brief), New York, NY. Paul Bender, Michael R. Klipper, Christopher A. Mohr, Mey er, Klipper & Mohr, PLL C, Washington, DC, for Amici Curiae Association of American Publishers, American Business Media, CoStar Group, Inc; Na tional Association of Realtors®, Reed Elsevier, Inc ., and the

Software & Information Ind

ustry Associat ion, in supp ort of App ellant. Jennifer M. Urban, Director, I ntellectual Property Clinic, University of Southern California, Gould Scho ol of L aw (L ydi a Wahlke a

nd Anne D ePree, C linical I nterns, on the brie f), L os Angeles, CA, for Amic i Curiae I nternet Archive , Americ an Assoc iation of L aw L ibrarie s, Association of Research Libr aries and Special Libra

ries Association in support of Defendant-Appellee

. Deirdre K. Mullig an, Dire ctor, Sam uelson L aw, Tec

hnology & Public Po licy

Clinic, Un

iversity of California School of Law (B oalt Hall) (Jack I. L erner, Clinic Fellow, on the brief), Berkeley , CA, for Amici Curiae Twenty-Nine Intellectual Proper ty and Constitutional La

w Professors in support of Defendant-Appellee

. Robert W. Clarida, Cowan, Liebowitz & L atman, P.C., for Amic i Curiae U MG Recor

dings, Inc., EMI Music North America d/b/a Capitol Records, Inc ., Warner Music Inc., Univision Music LLC, d/b/a Uni vision Mu sic Group, N ational Acad emy of Recording Arts & Sciences, American Federa tion of Musicians of the United States and Canada, American Feder ation of T elevision

and Radio

Artists, Re cording

Artists Coa

lition and N ational Mu sic Publishers Association, Inc. in support of Appellant

.3

POOLER, Circu it J udge : This appe al prese

nts a rec urring issue in c onstitutional law: th e extent to w hich Cong

ress

can use one of its p owers to e nact a st atute tha t it could no t enact u

nder ano ther of it s argua

bly relevant powers. See, e .g. , Ry. L abor Executives’ Ass’n v. Gibbons , 455 U.S. 4 57 (1982) ; Heart of Atlanta Motel, Inc. v. United States , 379 U.S. 2 41 (1964) ; In re Trade -Mark Cases , 100 U.S. 82 (1879). Here the statute involved is Section 2319A of Title 18, which prohibits the unauthorized recording of performanc es as well as the copy ing, distribution, sale, rental, and trafficking of these bootlegg ed phonorecords. The constitutional grants of cong ressional power at issue a re the Com

merce Cl ause, Ar

t. I § 8 , cl. 3, wh

ich perm its Congr ess “[t]o re gulate Commerce with foreign Nations, and among the several States, and with the Indian Tr ibes,” and the Copyright Clause, A

rt. I, § 8, cl. 8, which empowers Cong ress “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and I nventors the exclusive Right to their respective Writings and Discoveries.” The district court held that Section 2319A was not validly enacted under the Copy

right Clause because it gives rights to perfor mers that are unlimited in time without requiring that the performer have reduced his or he r performance to a fixed form. See United States v. Martignon , 346 F. Supp. 2d 413, 424 (S.D.N.Y. 2004). The court also held that Congress could “not e nact [such] copyright-like legislation . . . under the [C]ommerce [C]lause (or any other clause) , when the legislation conflicts with the limitation[s] imposed by the Copy right Clause.” Id. at 425 (internal footnote omitted). After examining the statute, its background, the two rele vant constitutional clauses, and applica ble prec edent, w e conclu

de that Con

gress w as free

to act und

er the Com

merce Cl ause to4

enact Section 2319A(a)(1) and (3). Our conclusion is limited to those provisions alone and does not reach other anti-bootlegging provisions of the Uruguay Round Agreements Act (“URAA”), Pub. L. No. 103-465, 108 Stat. 4809 (1994), from which Section 2319A is drawn. BACKGROUND The Statute The URAA was passed after the Urug uay Round of neg otiations respecting the General Agreement on Tariffs and Tr ade (“GATT”). William F. Patry , Copyright and the GATT An Interpretation and Legislative History of the Uruguay

Round Agreements Act

1 (1995). The Uruguay Round produced, in addition to other agreements, the Ag reement on Trade-Related Aspects of Intellectual Proper ty Rights (“TRI

PS”). Id. at 2 -3. TR IPS art . 14 (1) pro vi des : “In
respec t of a fixat

ion of the ir performance

on a phono gram, p erforme rs shall ha

ve the pos sibility of preventing the following acts whe n undertaken without their authorization: the fixation of their unfixed performances and the reproduction of suc h fixation.” These rights must persist for at least fifty y

ears from the end of the calendar year in whic

h the fixing or performance took place. TRIPS ar

t. 14(5). The state

parties t o TRIP S are “f

ree to de termine t he appro priate method of implementing the provisions of [TRIPS] within their own legal system and practice.” TRIPS art. 1(1). On Dece mber 15, 1 993, Pres ident Clinton notified the House

and Sena te of his in

tent to enter into the Uruguay

Round Trade Agreements including TRI PS. Memorandum from President William Jefferson Clinton to the Honorable Al Gore, President of the Senate, dated December 15, 1993 (reprinted in Patry , supra , App. B at B-3-B-6). Af ter the Uruguay

Round Trade Agreements had be en executed, Congress enacted the URAA. Pub. L . No. 103-465, 1081 17 U.S.C. § 1101(a) provides that copy right remedies shall be available ag ainst persons who commit the same acts. Unlike Section 2319A, Section 1101 does not require any particular mens rea or that the act be performe d for commercial gain or private f inancial gain. 5 Stat 4809 (1994). T he URAA contains two sections aimed at preventing bootleg ging of records. Section 51 2, codifi ed at 17 U .S.C. § 1101 , provide s a civil c ause of a ction for a performer who se performance was recor

ded without her consent, while Section 513, codified at 18 U.S.C. § 2319A, provides criminal remedies to the government. Section 2319A(a) provides that a person who, without the consent of the per former or performers, “knowingly

” and for “commercial advantag e or private financial gain” (1) fixes the sounds or sounds and images of a live musical performanc e in a copy or phonorecord, or reproduces copie s or phonorecords of such a performanc e from an unauthorized fixation; (2) transmits or otherwise communicates to the public the sounds or sounds and images of a live musical performance ; or (3) distr ibutes or offers to distribu

te, sells or offers to sell, r ents or of fers to r ent, or traffics in any

copy or phonore cord fixed as described in paragra ph (1) may be imprisoned for

up to five year

s and for up to ten ye ars for a second offense. 1 “‘Phonorecords’ are material objects in which sounds . . . are fixed by any method now known or later developed, and from which the sounds ca n be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” 17 U.S.C. § 101; see also

18 U.S.C. § 2319A(e)(1) (adopting Title 17 definitions of various terms including “phonorecords”). District Court Proceedings On October 27, 2004, a grand jury charged Martignon, the pr oprietor of Midnight Records in Manhattan, with one count of violating Section 2319A by reproducing an unauthor ized phonor

ecord a nd by distributi ng and s elling a

nd offer ing to dis tribute a

nd sell2 The Necessary and Proper Clause, which does not figure in our disposition of this case, allows Con

gress “ [t]o make al l Law s which sh all be ne cessar y a nd prope r for ca rry ing into Execution the foregoing Powers, and all other Powers vested by this Constitution in the Government of the United States, or in any Department or Officer thereof .” U.S. Const., art. I, § 8, cl. 18. 6 phonorecords of performances whic h had been recorded or fixed without the consent of the performer or performers. Mar tignon moved to dismiss the indictment, arguing that Section 2319A violated the Copyrig ht Clause because live performances ar e not “Writings” within the meaning of the clause and beca use live performances were g iven protection for perpetuity rather than for a “limite d Time[]”. Ma

rtignon also cla imed that t

he statute violated the Firs t Amendment. The government responded that Cong ress had authority to e

nact Section 2319A under the Commerce

and Nec essary

and Prope

r Clauses

. 2 The district court granted the motion to dismiss. Martignon , 346 F. Supp. 2d at 429. The court began its analysis with an examination of whether Section 2319A was copy right or commercial regulation. Id. at 419. Although the court acknowledge d that if Congress had the power to enact Section 2319A under the Commerce Clause, its belief tha t it was acting under the Copyright Clause would not be dispositive, id. at 419-20 , it held tha t “it is still e ssential t

o determine how to c lassify a statute in order to ensure that it doe s not run afoul of a ny e xpress limitations imposed on Congress when regulating in the respec tive arena,” id. at 420. For four
separa te but re lated re asons, Judg e Baer conclude d that Sec

tion 2319A

was more

closely tied to the Copy right th an to the Co

mmerce C lause. F irst, the a greem ent that it implement

ed, TRI PS, was intended to protect intellectual property

. Id. Second, the words of the statute were consiste nt with the

purpose o f the Copy

right Cla use, enc ourag ing authors and in ventors t o creat e by gr anting them exclusive rights in their writings and discoveries. Id. Third, the Committee on7

the Judiciary’s report de scribes the legislation in terms of copy right and contains no mention of

commerce. Id. at 421 (citing S. Rep. No. 103-412, at 224 (1994)). Fourth, Section 2319A follows the criminal copyr ight provision and refers to the definitions in Title 17, the copy right title of the United States Code. Id. at 421-22. Despite t he copy right- like appe arance

of Sectio n 2319A, th e distric t court he ld that it

co ul d n ot be su st ai ne d u nd er th e C op yri gh t C la us e b ec au se it “p ro vi de s s ee mi ng ly perpetual protection

for unfixedmusical performances.” Id. at 423. Because the performanc es are unfixed at the time they are

recorded, the court held that they were not “Writings” within the coverag e of the Copyright Clause. Id. at 423-24 . Beca use the pr otection accord ed a live perfor mance is perpetual, the court reasoned that Section 2319A violates the “limited Times” pr ovision of the Copyright Clause. Id. at 424. Finally , the cour t held tha t Congre ss could no t do indire ctly , under th e Commerc e Clause or the Necessary

and Proper Clause, what it is forbidden to do directly under the Copyrig

ht Clause. Id. at 424-25 & n.15. More specifically, the court held: “Congress may not, if the Copyright Clause doe s not allow for such legislation, enact the law under a separate grant of power, even when that separate g rant provides proper authority

. Id. at 425. Because Section 2319A was, in Judge Baer’s view, “copy right-like legislation,” it could not be enacted under any other clause of the Constitution if it violated the limitations of the Copyright Clause. Id. The district court therefore found Section 2319A unconstitutional. Id. at 428. As an alter native to finding an absolute ban against enac ting copyr

ight-like legislation under any clause other than the Copyright Clause, Judge B aer held that “even if Congress may enact copy

right-like legislation under g rants oth er than t

he Copy right Cla use, . . . s uch leg islation ma

y no t be ‘fun

damenta lly3 The only other co urt to asse ss the con stitutiona lity of Sectio n 2319A concluded t hat it was properly

enacted pursuant to the Commerce Clause. See United States v. Moghadam , 175 F.3d 1269 (11th Cir. 1999). Moghadam, unlike Martignon, did not arg ue that Section 2319A violated the “limite d Times” provision o f the Copy right Cla use, and the Eleve nth Circui

t carefully noted that it did not reach this issue. See id. at 1273, 1281 & n. 15. 8 inconsistent’ with the fixation and durational limitations imposed by the Copy right Clause.” Id. He then found fundamental inconsistency between the “limited Times” provision and Section 2319A’s f

ailure to impose a ti

me limit for

violations

. 3 On October 22, 2004, the government filed a timely notice of appeal. The Government’s Contentions on Appeal The government argue s that the district court’s order is erroneous for two principal reasons. First, they

claim that the Copyrig

ht Clause is solely an affirma tive grant of power and does not limit Congress’s power to act under other clauses of the Constitution. Second, even assuming that the Co

pyr ight Clau se has som e limitations, the g overnme nt conten ds that the se limitations can only apply to matters within its scope, that is, fixed creative works or “Writings.” [Blue at 7] DISCUSSION Because the governme

nt concedes Congress could not have enac ted Section 2319A pursuant to the Copyrig

ht Clause, we must determine whether the Copy right Clause’s limitations also limit Congress’s power to regulate cre ative works under the Commerce Clause. On its face, Article I, § 8, simply

grants powers to Congress. No Section 8 clause , including the Copyrig ht Clause, states that Congress can make certa in laws only pursuant to that particular clause or that any limitations on the power g ranted by that c lause carry over to Congress’s power to act in a related area under a diffe

rent Section 8 clause. Nevertheless, in limited instances, the expressed9

limitations of one clause do apply externally to another clause. See Gibbons , 455 U.S. at 468. To determine whether Section 2319A is invalid because it violates limitations of the Copy right Clause, w e must ana

lyze the extent t

o which th e Copy

right Cla use can b e read t

o limit Congress’s power to enact leg islation under the Commerce Clause. Because a c entral focus of the part ies’ arg ument on external limi

tations is w

hether “ Writings” in the Copy

right Cla use is part of that clause’s grant of powe r or its limitations, we first consider whether the grant of powe r in the Copyright Clause c an be separated with any clarity from c onstitutionally created limitat ions on th at power. We c onclude tha t another wor d in the Co pyright Clause – "securi ng" –
may more ea sily be read to be at least a part of the Clause's gr ant of power, rather than a limitation; we thus ne ed not det ermine o n which sid

e of the l ine "Writ

ings" f alls. Prima

rily focusing on a trio of cases—the Trademark Cases , Heart of Atlanta , and Gibbons —in which the Supreme Court has considered issues similar to the one that confronts us, we conclude tha t the Commerce Clause suffices as authority for Section 2319A. Scope an d Limits of th e Copyrig ht Clause In Graham v. John Deere Co. , the Court described the Copyr ight Clause as “both a grant of power and a limitation.” 383 U.S. 1, 5 (1966). Seizing on this phrase, Martignon ar gues that the grant of power is the authority to regulate creative works a nd that the limitations are the requirements of fixation and time-limitation. Martignon also argues—althoug h Graham did not so hold—that the limitations apply externally to the Copyright Clause to limit Congress’s pow er to enact copy

right-like legislation under other portions of Article I , § 8. The Copyrig

ht Clause provides that Congress has the power “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and I nventors the exclusive10

Right to their respective Writings and Discoveries.” U.S. Const. art. 1, § 8, cl. 8. The government argues that this clause me ans that the government has the power to reg ulate creative and fixed works by g

ranting their creators exclusive rights for a limited time. Martignon, on the other hand, contends that the clause gives the g overnment the power to regulate cr eative works by gr anting authors and inventors exclusive rights in written works for a limited time. Under the government’s interpretation of the clause, pe rformances are completely outside the scope of the Copyright Clause be cause they are not fixed. Under Martignon’s interpretation, per formances are with in the sco pe of the Copy right Cla use beca use they are cr eative w orks but vi olate its l imits because the performances a re not fixed and the protection is granted for an unlimited time. I n an alterna tive arg ument, Ma

rtignon claims tha

t the subse ctions und

erly ing the c harge agains t him violate th e “limite d Times” provision— regar dless of w

hether t he fixation

require ment is considered as part of the gra nt of power or as a limitation—because he could only have sold, copied or distributed fixed works. Martingnon further arg ues that once we determine original works ar e within th e scope o f the Copy right Cla use, we m

ust nece ssarily

conclude that Cong

ress cannot regulate original wor ks under any othe

r grant of power. It is not clear from the wording of the Copyrig

ht Clause where the grant of power ends and where the limitation(s) begin(s). This clause a llows Congress “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and I nventors the exclusive Right to their respective Writings and Discoveries.” One could draw the line between gra nt and limitation( s) almost a

nyw here in t his sente nce. For example, the gra nt of powe

r could be to pass legisla tion to pro mote the u seful ar ts and sci ences, l imited, how ever, to the rea lm of the or

iginal, to the method of granting exclusive rights, and to a per iod of limited duration. Conversely, the11

Clause can be construed to allow Congress to pass legislation giving creators of origina l work an exclusive right in their fixed work, limited only by the requirement that the grant be of limited duration. We find no useful punctuation or structural clues in the text of the clause. I ndeed, the “limited Times” language, which both parties a gree is a limitation rather than part of a g rant of power, is squarely

in the middle of the Clause. Further, the Graham Court rea

d the cre ativity requirement, “[t]o promote the . . . useful Arts,” as a limitation on Congress’s power, thus suggesting that the power g ranted and the limitations are virtually coterminous. See 383 U.S. at 5. The text of the Copyright Clause doe s not alone provide sufficient guidance for us to de cide where to draw that line for purposes of dec iding this case. The Supreme Court has indicated that Congress can sometimes ena ct legislation under one constitutional provision that it could not have enacted under another. See, e .g. , Heart of Atlanta , 379 U.S. at 260-61 (upholding a civil rights statute as a permissible exercise of Commerce Clause power, although a similar statute previously had been declared unconstit utional a s bey

ond the po wer of Congress under the Thirtee nth and F ourteen

th Amendments, see The Civil Rights Cases , 109 U.S. 3, 10-25 (1883)). Howeve r, this pow er is not unlimited. See Gibbons , 455 U.S. at 465-66 (holding that a statute was repugna nt to the Bankruptcy

Clause and could not be considered a legitimate exercise of Commerce Clause power even though bankruptcy

and commerce are “intimately connected”). Because

the parties attach different import to these cases and to the Trade-Mark Cases , we examine them to determine where to draw the line between (1) a law which, while related to one constitutional provision and unauthorized by it, can be va lidly enacted unde

r a different provision; and (2) legislative ac tion that is prohibited un

der one p rovision a nd canno t be enac

ted under another even thou

gh it is4 This decision reflects the Court’s earlier limited view of the Commerce Clause

.

Trademark legislation, has long since be en upheld as an exercise of Commerce Clause power even where a defendant uses its mark only in intrastate commerce. Dawn Donut Co. v. Hart’s Food Stores, Inc. , 267 F.2d 358, 365 (2d Cir. 1959).

5 The Court

also examined and re

jected Congress ’s author

ity p ursuant t o the Thir teenth Amendment, but its analysis is not relevant to the issues befor e us. The Civil Rights Cases , 109 U.S. at 20-25. 12 seeming ly w

ithin the pu

rview of the second provisi on. We find no absolut

e answe rs beca use none of the cases cited by the parties is directly on point. Howe ver, we do find strong indicators of the lines along which our analy sis must proceed. We begin with the Trade-Mark Cases in which the Court held that a criminal trademark statute was not authorized by the Copy right Clause because trademarks do not re quire originality

. 100 U.S. a

t 94. The Co

urt then h eld that b ecause the trad emark sta tute was n

ot limited to interstate commerce, it could not be justified as an exercise of Commerce Clause power. 4 Id. at 97-98. We read this case as standing for the proposition that when a n intellectual property

law could not have been enacted pursuant to the Copy right Clause because it governs wor ks lacking originality, a c ourt should alternatively conside r whether it was validly

enacted under the Commerce Clause. Heart of Atlanta consider ed a law prohibitin

g discr imination on accou

nt of rac e in privately owned public a

ccommodations such as motels and hotels. 379 U.S. at 247. The legislation that the Heart of Atlanta Court con sidered

was not the

first atte mpt by Congre ss to prohibit racial discrimination in public accommodations. Some eighty years pr eviously, after considering any

authority the Four

teenth Amendment 5 gave Congress to enact leg islation prohibiting private discrimination, the Court had held that a very similar statute was13

unconstitutional. The Civil Rights Cases , 109 U.S. at 18-19. The Fourteenth Amendment provides in pertinent part: “No State shall make or enforce any law whic

h shall abridge the privileges or immunities of citizens of the United States; nor shall any State deprive

any person of

life, liberty, or prope

rty without due proce ss of law; nor deny to any

person within its jurisdiction the equal protection of the laws.” U.S. Const. amend. XIV, § 1. The Court, theref ore, held that some form of state action was necessa ry to trigg er Congress’s power under the Fourte enth Amendment. The Civil Rights Cases , 109 U.S. at 11. Because the statute under considera tion applied to private actors, the Court invalidated it. Id. at 18-19. I n passing , the Cour

t said, “w hether c ongre ss, in the e

xercise o f its powe

r to reg ulate

commerc e among

the seve ral state s, might o r might not pass a l aw reg ulating rights in public
conveya nces passing from one state to another, is also a question which is not now bef ore us, as the sections in question are not conceived in any such view.” Id. at 19. In contrast, before

enacting the civil rights bill at issue in Heart of Atlanta , Congre ss heard te stimony

that “disc

riminatio n by

race or color pla ces [burd ens] upon in

terstate commerce.” Heart of

Atlanta , 379 U.S. at 252. Further, Congress limited the applicability of the Act to those motels, inns, and hotels that offered more than five rooms to transient gue sts and therefore affected interstate commerce. Id. at 247-48. The Court held that the Civil Rights Cases were “ inapposit

e” beca use the st atute in q uestion wa s confine d to institut ions aff ecting intersta te

commerce. Id. at 250. Despite its conclusion “[t]hat Congress was legislating ag ainst moral wrongs,” the Court upheld the law based on “the ove rwhelming evidence of the disruptive eff ect that racial discrimination has had on commercial intercourse.” Id. at 257. Heart of Atlanta takes us a step further than the Trade-Mark Cases . From the latter case,14

we draw the not surprising conclusion that if a statute is outside even the most g eneralized interpretation of the scope of the Copy right Clause, i.e., it is not a copy right law, it can be regula ted under the Commer

ce Clause . Howeve

r, it can not be sai d that ra

cial disc riminatio n is outside th e scope o f the Fou rteenth Amendmen

t; instead , it is at its c ore. The refore , at leas t in some insta

nces, Con gress c an reg

ulate und er the Com

merce Cl ause wha

t it could no t regul ate under an amendment specifically aimed at the wrong at issue. Martig non, howe

ver, con tends tha t Heart of Atlanta is very differe nt from thi s case because the Fourteenth Amendment contains no spec ific limitations on Congress’s general power to enact legislation. The Fourteenth Amendment, of c ourse, is limited to state action, but that restric tion is expre ssed as a part of the gran

t of powe r given to Congr ess rath er than a s a limitation on the power once granted. Thus, in Martignon’s vie w, Heart of

Atlanta closely resembles the Trade-Mark cases. Jus t as the Copyr

ight Clau se empow ers Cong ress to re gulate creative works, the Fourteenth Amendment g rants Congress the power to act ag ainst statesponsored discrimination. It then would follow that just as Congress wa s free to regulate noncreative trademarks under the Commerce Clause, it was also free to prohibit discrimination that

was not sta

te-spons ored und

er the sa me claus e. While Ma

rtignon ’s arg

ument may

have some logic to support it, the Heart of Atlanta Court drew no such subtle distinctions between the grant of power and limitations on the grant of power. Rather, the Court simply reasoned that it didn’t matter if Congre ss lacke d the powe r to enact anti-dis criminat ion legi slation covering

private actors under the Fourteenth Amendment as long as it possessed sufficient power under the Commerce Clause. We turn finally to Gibbons , which is a t the hea rt of Mar tignon’ s claim tha

t Congre ss15

could not e

nact Sec tion 2319A

under the Commerce

Clause be cause of

limitations

containe d in the Copyright Clause. In 1975, The Chicago, Roc k Island, and Pacific Railroad Co. (“Rock Island”) petitioned for re organization under the bankruptcy laws. Gibbons , 45 5 U. S. at 4 59. In 1979, a strike caused Rock Isla nd to stop operations, and the bankruptcy court directed Rock Island’s trustee to prepar

e a liquidation plan. Id. In June 1980, the bankruptcy court concluded that employee-la

bor-protection claims could not be paid out of Rock I sland’s assets. Id. at 460. Congress responded by

enacting the Rock I sland Railroad Transition and Employee Assistance Act (“RITA”). Id. at 461. RITA provided that the trustee must pay up to $75 million to Rock Island employ

ees who were not hired by other carriers. Id. at 461-62 . These p ay ments wer

e to be made as administrative expenses, which would give them priority over other creditors’ claims. Id. at 463. When the matter reached the Supreme Court, it invalidated the pertinent RI TA provisions as “repugnant to Art. I , § 8, cl. 4, the Bankruptcy Clause, of the Constitution.” Id. at 465. F irst, the Court analyzed whethe r RITA was an exercise of Congress’s Bankruptcy

Clause or Commerce Clause power. I t acknowledged that “[d]istinguishing a congr essional exercise of power under the Commerce Clause from an exercise under the Bankruptcy

Clause is . . . not an easy task, for

the two Clauses are closely related.” Id. Nevertheless, and for several re asons, the Court found that Congress exercised its power under the Ba nkruptcy Clause. Id. at 466. F irst, RITA contained specific dir ectives to the bankruptcy

court concerning the distribution of the property of a

particular estate. Id. at 467. Second, it rearranged the pr iorities of various payments from the e state, giving the employ ees priority over

other creditors. Id. Third, the events surrounding the enactment of the legislation indicated that Congress knew it was16

exercising its powers under the Bankruptcy Clause. Id. at 467-68. Finally, RI TA was passed almost five years after Rock Island soug ht the protection of the bankruptcy laws. Id. at 468. The Court then turned its attention briefly to the Commerc e Clause, saying , “[w]e do not understand either appellant or the United States to arg ue that Congress may

enact bankruptcy laws pursuant to its power under the Commerce Clause.” Id. at 468. The Court also noted that the Ban kruptcy Clause “c ontain[ed

] an affir mative limi

tation or r estricti on upon Con

gress’ power”—that bankruptcy laws must be uniform throughout the United States—that was not contained in the Commerce Clause. Id. The Court theref ore rea soned tha

t “if we w ere to ho ld that Congress had the power to enact nonuniform bankr uptcy laws pursuant to the Commerc e Clause, we would eradicate from the Constitution a limitation on the power of Congress to ena ct bankruptcy law s.” Id. at 468-69. The Court then examined the uniformity re quirement, found that RITA violated this requirement, and dec lared it unconstitutional. Id. at 469-73. Gibbons ’ analy

sis diffe rs in one i mportant r

espect f rom the c ases we

have pre viously examined: It considers whether RI TA was really

a bankruptcy

or a commercial regulation. Read too broadly, this aspect of Gibbons would conflict with clear Supreme Court precedent holding that it does not matter that Congress believes it is legislating under a clause which would not give it the power it seeks as long as it actually has the power to legislate under another. See Woods v. Cloyd W. Miller , 333 U.S. 138, 144 (1948). A careful reading of Gibbons avoids any such conflict. The Gibbons Court con sidered primaril y w hat RI TA did, not

Congre ss’s belie f as to which clause authorized its action. RITA manda ted that an existing bankruptcy proceeding be handled differently

from any other

bankruptcy in the United States. I t also altered the statutory priorities for paying

debts and the administrative scheme contemplated by the Bankruptcy

Code.17

It was a bankruptcy

law. We believe that the Supreme Court’s cases allow the reg ulation of matters that could not be reg ulated un der the Co

pyr ight Clau se in a ma

nner ar guably inconsiste

nt with tha

t clause unless the statute a t issue is a

copy right la w. We dra

w this less on from Heart of Atlanta and from Gibbons . In Heart of Atlanta , the Court found authority for Cong ress to enact a statute that prohibited race discrimination in public accommodations affecting interstate commerce, even though the prohibition ran to discrimination not involving "state action," under the Commerce Clause although the Fourteenth Amendment did not allow Congre ss to enact a similar statute. The Gibbons Court foun

d that RI TA was a

ctually a bankru ptcy law, not that it was v ery

close to a bankruptcy

law or that it was bankruptcy-like. Because Gibbons is the only case c alled to our attention by the parties or the amici in which the Supreme Court struck down a statute that violated the limitation of one constitutional provision despite its clear nexus to another provision, we conclude that 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 grante d Congre ss by

the Copy right Cla use and ( 2) the re sulting la w violate s one or more spec ific limits of the Copyright Clause. For r easons that follow, though, to resolve this appeal, we need not identify the full scope of the power granted by

the Copyright Clause. With these principle s in mind we consider whether Section 23 19A is a c opy

right la w in the sense that RITA was a ba nkruptcy law. See Gibbons , 455 U.S. at 467-68 (discussing the factors that identified RITA as a bankruptcy law

). The Gibbons Court described aspects of RITA —rearr anging prioritie s for cla

ims aga inst the de

btor and d

irecting the bankr uptcy court to distribute the estate in a certain manner—that mirrored, a lbeit in a way that violated the6 We are not here presented with an occa sion to analyze the constitutionality of the Lanham Act, 15 U.S.C. § 112 5, which m ight be t hought to allocate propert y r ights in ( unorigi nal) expression. But we do not mean to cast doubt on our conclusion in Dawn Do nut C o. v. H art's Food Stores, Inc. , 267 F.2d 358, 365 (2d Cir. 1959), that the Commerce Clause furnishes authority for Cong

ress to establish trademark rights. I nstead, we state only

that in order for a law to be cons idered a

n exercis e of Cong

ress's Copy right Cla use powe r, it must a

llocate p roperty rights in expression. Because Section 2319A does not meet that minimal requirement, we need not here delve into what other character istics are necessary . Suffice it to say for the moment that (continued...) 18 Bankruptcy

Clause, provisions of bankruptcy la w. We will judge the constitutionality of Section 2319A under the same standard that the Gibbons Court used ; that is, in order to demonstr

ate unconstit utionality , Martig non must es tablish tha

t Section 2 319A is a c opy right la w and not j ust that it is copyright-like. We perceive two possible avenues to a resolution of the issues before us. As a starting point for deciding whether Martignon ha s met his burden, we examine first the text of the Copy right Cla use, in lig ht of the c ases we

have disc ussed. Un

like the B ankruptc

y Cla use analyzed in Gibbons , the Copy right Cla use does n

ot identif y th e ty pe of law Congre ss may

pass pursuant to it – indee d, the wor

d "copy right" does not a

ppear in it at all. T o repea

t, the cla use reads: " To promote

the Prog ress of Sc ience a

nd useful Arts, by securin g for li mited Time s to Authors a nd In ventors t he exclusi

ve Right to their r especti ve Writing s and Disc overies ." U.S. Const . art . I , § 8, c l. 8. T

he cl ause thus e mpowe rs Con gre ss to " secu

r[e] . . . Rig

ht[s]. " We understand the word "secure" to mean to create, bestow, and allocate, ra ther than to add protection for separately

created and existing rights. See Wheaton v. Peters , 33 U.S. 591, 660-61 (1834) (concluding that "secur[e]," in this context, does not mean protect; it means establish). Using this textual approach, the issue becomes whether Section 2319A cr eates, bestows, or allocate s rights

. 66 (...continued)

we think th e La

nham Act d

oes not ha

ve additi onal cha

racter istics tha t would mak

e it an exe

rcise of Copyright Clause pow er. 19 The sec ond way

to identif y th e contro lling ch aracte ristic of the powe r gran ted Cong ress by Article I , Section 8, cl. 8 is to rely on its history and context. Although the clause does not mention the word "copy

right," the framers did. See The Fed eralist , No. 43 (q

uoting th e clause and arg uing for its utility by r efere ncing th e "copy

right of authors" in Engla

nd). I f the cla

use is meant to give Congress the power to pass copy right laws, we can fashion a working definition of a "copy right law" by

looking for characteristics common to statutes, not gove rned by the g

rant of power embodied in the Copyr ight Clause, that are concededly copyrig ht laws. Copyright laws adopted b y th e colonie s prior to r

atifica tion, colo nial-er

a Britis h copy

right la ws, and st

ate
copy right la ws are h elpful. T

hey all seem t

o share a common fe ature: T

hey allocate propert y rights in expression. See, e .g. , Statute of Anne, 1710, 8 Anne, ch. 19 (Eng.); L aw of March 17, 1783, An Act for the Purpose of Securing to Authors the Exclusive Right and B enefit of Publishing

their Literary

Productions, for Tw enty-One Ye ars, Mas sachuse tts. Moder

n state copyrig ht laws sometimes allocate rights for unlimited times, or they grant rights to unfixed works, see, e. g. , Cal. Civ. Co de § 980( a)(1) – evidenc e that dur

ation and fixation re quireme

nts are not i dentify

ing cha racter istics of c opy

right la ws. I n any event, though al location

of prope rty rights is not a sufficient condition for calling something a c opyright law , cf. Dawn Donut Co. v. Hart's Food Stores, I

nc. , 267 F.3d

358, 365 ( 2d Cir. 195 9) (holdi ng that t he La nham Act i s a valid exercise of congressional power under the Commerce Clause), it is a necessary one. Section 2319A does not create and bestow property rights upon authors or inventors, or allocate those rights among claimants to them. I t is a criminal statute, falling in its codification20

(along with Secti on 2319B about boo tlegg ed films) betwee n the law c

riminalizin

g cert ain
cop yrigh t i nfr in gem ent and th e la w cr im in ali zi ng " tra ffi cki ng i n co unt erf eit goo ds o r se rvi ces ." It is, perhaps, analogous to the law of criminal trespass. Rather than creating a right in the performer him- or herself, it crea tes a power in the government to protect the intere st of perfor mers fro m commerc ial pred ations. Se ction 2319 A does not grant t he perf ormer the right to exclude others from the performance – only the government can do that. Cf. Coll ege Sav ings Bank v. Florida Prepaid Postsecondary Ed. Expense Bd. , 527 U.S. 666, 673 (1999) (stating that "[t]he hal lmark of a

protect ed prope rty interest is the rig ht to exclud

e others " and tha

t this rig ht is "one of the most essential sticks in the bundle of rights that are c ommonly charac terized as property" (internal quotation marks omitted)). Neither may the performer transfer his or her interests under Section 2319A to another. Compare 18 U.S.C. § 2319A (providing that only the performer may

grant or deny

authorization) with

17 U.S.C. § 201(d) (providing for the transfer of "ownership of a copy

right"). Section 2319A only prevents others from doing something without the authorization of the protected person. I t may theref

ore 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," nor is it a copy right law. Thus, under either mode of analysis, Section 2319A is not subject to the limitations of Article I, Section 8, cl. 8. A compar ison of Section 2319A to the current Copyr ight Act reinfor ces this c onclusion . The Copy right Ac t grant s the holde

r of a co pyr ight the exclusive

right (1) to re produce the copy righte d work in c opies or phonorec ords; (2) to prepare derivative works base d upon the copyrig hted work; (3) to distribute copies or phonorecords of the copy righted work to the publ ic by sale or oth er tran sfer of owners hip, or by rent al, le ase or l endin g; (4) in the case of literar y, m usical, d ramatic , and cho reogr

aphic wo rks,21

pantomimes and motion pictures and other audiovisual works, to perform the co pyr ig ht ed wo rk pu bl ic ly; (5) in the case of literar y, m usical, d ramatic , and cho reogr

aphic wo rks, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrig

hted work publicly; and (6) in the case of sound recordings, to pe rform the copy

righted work publicly by

means of a digital audio transmission.

17 U.S.C. § 106. Section 2319A might be read to give the artist at least one right—the right to allow the fixation of

his or her

perfor mance—b

ut the Copy

right Ac t gives t he author an extensi

ve bundle of rights in his fixed work. Unlike a performer under Section 2319A, a n author enjoying Copyright Act protection may pre vent others from performing, copy ing, or preparing deriva

tive works from the author’s copy righted work. Further, the Copy right Act, but not Section 2319A, gives the author of a work the rig ht to transfer his rights in the work to another person or entity

. See 17 U.S.C. § 106. Because “the princip[al] purpose of the [Copy right Act] is to encourage the origina tion of cr eative w orks by

attachin g enfo rceabl e proper

ty r ights to them,” the

contras t betwee n the ver y lim ited rig ht given to a perf ormer by Section 23 19A and th e extensiv e right s given by Section 106 is significant. Matthew Bender & Co., I nc. v. West Publ’g Co. , 240 F.3d 116, 122 ( 2d Cir. 200 1) (inter nal quota tion marks

omitted); see Roth v. Priti kin , 710 F.2d 934, 939 (2d Cir. 1983) (avoiding an interpretation of the Copy right Act that would raise a constitutional question arising from the fact that “[a]n interest in a copy right is a property

right protected by the

due process and just compensation clauses of the Constitution”). In sum, Section 2319A does not create, be stow, or allocate property rights in expression, it does not share the defining characte ristics of other laws that are concededly "copy right laws,"7 We acknowledge that our analy sis necessarily triggers concerns about the ability of Congress to criminalize other conduct that would be permitted under the Copy right Clause and the copyrig

ht laws of this country, for instanc e the reproduction and sale of a literary work that has long lost its copyr

ight pro tection. Becau se such st atutes a re not be fore us, we cann ot addre ss them. We do

note, how ever, th at there could be o ther con stitutiona l problems

associa ted with such stat utes, inc luding po ssible viol ations of the Due Pr

ocess Cla use and th e First A

mendment

. 22 and it differs significantly from the Copyrig

ht Act that was passed pursuant to the Copy right Clause (and that is valid under it). We therefore conclude that it was not e nacted under the Copyright Clause. We have no need to examine whether it violates limits of the Copyrig ht Clause and proceed instead to an examination of its sustainability under the Commerce Clause. 7 Commerc e Clause A uthority “It is by now well established that legislative Acts adjusting the burdens and be nefits of economic life come to the Court with a presumption of constitutionality.” Usery v. Tur ner Elkhorn Mining Co. , 428 U.S. 1, 15 (1976). “A court may invalidate legislation enacted under the Commerce Clause only if it is clea r that there is no rational basis for a congre ssional finding that the regulated activity affects interstate commerce, or that ther e is no reasonable connection between the regulatory

means selected and the asserted ends.” Fed. Energy Regulatory

Comm’n v. Mississippi , 456 U.S. 742, 754 (1982). Section 2319A has substantial commercial and economic aspects. Inde ed, regulation of bootlegg ing is necessary at the federal level because of its interstate and international commercial aspects. Without this scope, bootlegging could be adequately

regulated, as it has been in the past, by the states. See Moghadam , 175 F.3d at 1272 n.5. Given the nexus between bootlegging a nd commerce, it is clear that absent any limitations stemming from the Copyrig ht Clause, Congress would have had the power to enac t Section 2319A (a)(1) & (3) un der th e Comm erce Cl ause. Furth er, Se ction 2319A regulat es onl y fixing,8 This commercial purpose distinguishes Section 2319A from Section 1101. A person

who recorded a concert for her personal enjoy

ment would not violate Section 2319A. Further, because no commer

cial motiv e is requ

ired for a Section 1101 viola

tion, we sp ecifica

lly l imit to da y’s ho ld in g t o S ec ti on 23 19 A a nd ex pr es s n o o pi ni on on Se ct io n 1 10 1' s c on st it ut io na li ty. 23 selling, distributing, and copy ing with a commercial motive, activities at the core of the Commerce Clause. 8 See Gonzales v. Raich , 545 U.S. 1, 25 (2005). It would have been eminently reasona

ble for Congress to conclude that the sale and distribution of bootleg phonore cords wil l have a s ubstantia l intersta te effe ct on the s ale and d istributio n of leg itimate phonore cords. B ecause

Section 23 19A is not a

copy right la w and its e

nactmen t was wel l within the scope of Congr ess’s Comm erce Cla

use authority , it is const

itutionall y pe rmissible unless some othe

r constitu tional provision pre

vents its e nforce ment. IV. Fir st Ame ndment Martignon argued below and a mici Twenty-Nine I

ntellectual Property a

nd Constitutional Law Professors arg

ue here that Sect ion 2319A v

iolates th e First A

mendment

because it is unconstitutionally overbroad, conta ining no fair use exception or durational limitation. The district court did not reach this argument because it found a violation of the Copyright Clause. We there fore re

mand to al low the dis trict cou rt to cons ider the

First Ame

ndment ar

gument. CONCLUSION For the r easons th at we ha

ve discus sed, we v acate t

he dismissa

l of the ind

ictment a gainst Martignon and remand for further proceedings consistent with this opinion.