E ,L~TIIXBKNEY GENERAL. 

OlF?J?EZXAS 

Honorable W. T. McDonald, Jr. 

County Attorney 

Braxos County 

Bryan, Texas 77801 

Opinion No. M-1114 

Dear Mr. McDonald: 

Re: Whether Art. 1137r, Sec. l-4, 

Vernon's Penal Code, prohibiting 

the reproduction for sale of 

sound recordings without the 

original owner's consent is 

unconstitutional as in conflict 

with the Copyright Clause, Art. 

I, Sec. 8, Cl. 8, United States 

Constitution, and the implementing federal statutes, 17 USC 

§§ 1-215, the Copyright Act. 

You have asked us for an opinion as to whether Art. 

1137r, Sections l-4, Vernon's Penal Code, prohibiting the reproduction of sound recordings without the original owner's 

consent is unconstitutional as in conflict with the Copyright 

Clause, Article I, Section 8, Clause 8, United States Constitution, and the implementing federal statutes, 17 USC ~55 1-215, 

the Copyright Act. In this connection we have carefully examined the materials forwarded with the opinion request which 

raise the issue of whether the preemption doctrine applied in 

the companion landmark decisions of the United States Supreme 

Court in Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 

(1964) and Compco Corp. v. Day-Bright Lighting, Inc., 376 U.S. 

234 (1946) precludes the States from enacting statutes proscribing the duplication of uncopyrighted material. Also as 

you point out, we note that on October 15, 1971, effective 

four (4) months after enactment, the 92nd Congress of the 

United States, through a series of amendments to the Copyright 

Act, provided a limited prospective protection to owners of 

original sound recordings in Public Law 92-140 (S.646).1 

The magnitude of the problem involved which prompted 

the federal legislation is described in House Report (Judiciary 

11971 U.S. Code Cong. & Adm. News Pamph. No. 9, pp. 2469-2471. 

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. . 

Honorable W. T. McDonald, Jr., page 2 (M-1114) 

Committee) No. 92-487, dated October.4, 1971, on Public Law 

92-140, as follows: 

"The attention of the Committee has 

been directed to the widespread unauthorized reproduction of phonograph records 

and tapes. While it is difficult to establish the exact volume or dollar value of 

current piracy activity, it is estimated 

by reliable trade sources that the annual 

volume of such piracy is now in excess of 

$100 million. It has been estimated that 

legitimate prerecorded tape sales have an 

annual value of approximately $300 million. 

The pirating of records and tapes is not only 

depriving legitimate manufacturers of substantial income, but of equal importance 

is denying performing artists and musicians 

of royalties and contributions to pension 

and welfare funds and Federal and State 

governments are losing tax revenues."* 

The desire to attack this abuse no doubt moved the 

62nd Legislature of the State of Texas to enact Art. 1137r, Sections l-4, Vernon's Penal Code, prohibiting the "piracy" of sound 

recordings. 

Initially, it is to be presumed that a duly enacted 

statute of the State of Texas is valid against objection on 

constitutional grounds. 12 Tex. Jur. 2d, Const. Law, Sec. 42, 

pp. 385-386: 

II . . . a statute will not be declared 

constitutional for the mere reason that 

it has been enacted by the legislature, 

it is presumed that the legislature has 

acted within its powers, and a duly enacted statute is presumed to be constitutional. And if there could be a state 

of facts justifying the legislative action, it is presumed that such a state 

of facts exist." 

Likewise, the Supreme Court of the United States has 

emphasized that ". . . this Court's decisions . . . enjoin(s) 

21971 U.S. Code Cong. & Adm. News Pamph. No. 9, p. 2551. 

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. 

Honorable W. T. McDonald, Jr., page 3 (M-1114) 

seeking out conflicts between state and federal regulation 

where none clearly exists." Huron Portland Cement Co. v. 

City of Detroit, 362 U.S. 440, 446 (1960) . A clear showing 

of conflict is required. As stated in Schwartz v. State of 

Texas, 344 U.S. 199, 203 (1952), the rule is that: 

"'It should never be held that Congress 

intends to supersede, or by its legislation suspend, the exercise of the police 

powers of the states, even when it may 

do so, unless its purpose to effect that 

result is clearly manifested.' Reid v. 

State of Colorado, 187 U.S. 137, 148, 23 

S. Ct. 92, 96, 47 L.Ed 108." 

U.S. 132, 

In Florida Lime and Avocado Growers, Inc. v. Paul, 373 

142 (1963) the court held: 

"The test of whether both federal and 

state regulations may operate, or the 

state regulation must give way, is 

whether both regulations can be enforced 

without impairing the federal superintendence of the field not whether they are 

aimed at similar 0; different objectives. 

"The principle to be derived from our decisions is that federal regulation of a field 

of commerce should not be deemed preemptive 

of state regulatory power in the absence of 

persuasive reasons--either that the nature 

of the regulated subject matter permits no 

other conclusion, or that the Congress has 

unmistakably so ordained. See, e.g., Huron 

Portland Cement Co. v. Detroit, supra." 

-(Emphasis supplied) 

Further in Colorado Anti-Discrim. Comm. v. Continental 

Air Lines, 372 U.S. 714, 721 (1963), the Supreme Court, in ruling on the validity of a state statute under the Supremacy DOCtrine, held: 

. . . that the mere "fact of identity does 

not mean the automatic invalidity of State 

measures'. California v. Zook, 336 U.S. 725, 

730 (1949). To hold that a state statute 

identical in purpose with a federal statute 

is invalid under the Supremacy Clause, we 

must be able to conclude that the purpose 

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Honorable W. 

of 

be 

T. McDonald, Jr., page 4 (M-1114) 

the federal statute would to some extent 

frustrated by the state statute. We can .~ 

reach no such conclusion here." (Emphasis 

supplied) 

It is noteworthy that the Judiciary Committee Report on Public 

Law 92-140, referred to above, while mentioning the preemption 

argument concerning the II . . . jurisdiction of States to adopt 

legislation specifically aimed at the elimination of record and 

tape piracy . . . It, expressly refused to express an (1 . . . 

opinion concerning this legal question, . . . ~ "3 Hence, it 

can hardly be contended from the legislative history of Public 

Law 92-140 that Congress clearly intended to supersede existing 

state statutes on this subject matter. 

Our research fails to reveal any case which makes the 

doctrine of the Sears and Compco cases applicable to the piracy 

of sound recordings. To the contrary, we find that the courts 

of California, Illinois, New York and North Carolina have specifically rejected this application in upholding state statutes 

prohibiting the "piracy" of sound recordings. See Ca itol Records, Inc. v. Erickson, 2 Cal. App. 3d 526, 82 Cal. --%7m 79 , 

40 ALR 3d 553; Capitol Records, Inc. v. Greatest Records, Inc., 

43 Misc. 2d 878, 252 N.Y.S. 2d 553 (Sup. Ct. 1964); Columbia 

Broadcasting S 

2d 723 , 248 

Inc. v. Spies, 

Inc. v. Eastern Tape Corp., Superior Court of Met 

County, No. 70-CVS-15018 (Jan. 6, 1971). 

An excellent discussion of this question is contained 

in the three judge court's opinion in Tape-Industries Association of America v. Younger, 316 F. Supp. 340 (C.D. Calf. 1970), 

appeal dism. 401 U.S. 902 (1971). Therein plaintiffs sued to 

enioin the enforcement of the California "taoe ~- c----1 uiracv" statute. 

PeAal Code, Sec. 653h (1968)4: 

31971 U.S. Code Cong. & Adm. News Pamph. No. 9, p. 2552. 

4"§653h. Transfer of recorded sounds for unlawful use; sale 

(a) Every person is guilty of a misdemeanor who: 

(1) Knowingly and willfully transfers or causes to be 

transferred any sound recorded on a phonograph record, disc, 

wire, tape, film or other article on which sounds are recorded, 

with intent to sell or cause to be sold, or to use or cause to 

be used for profit through public performance, such article on 

which such sounds are so transferred , without the consent of 

the owner. 

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,. . 

Honorable W. T. McDonald, Jr., page 5 (M-1114) 

"Plaintiffs contend that the so-called 

'tape piracy' law of California, Penal 

Code, Section 653h (1968) is in conflict 

with the Copyright Clause of the United 

States Constitution, Art. I, Sec. 8, Cl. 

8, and the implementing Federal copyright 

statutes, 17 USC 5s 1-215." (316 F. Supp. 

at 341-342). 

The court distinguished Columbia Broadcasting System v. DeCosta, 

377 F2d 315 (1st Cir 1967), Cable Vision, Inc. v. KUTV, Inc., 

335 F2d 348 (9th Cir. 1964), Smith v. Chanel, Inc., 402 F2d 

562 (9th Cir. 1968) and the Sears and Compco cases, supra, on 

the basis that: 

"In contrast, plaintiffs in the instant 

case do not imitate the product of the record companies. They actually take and 

appropriate the product itself--the sounds 

recorded on the albums--and commercially 

exploit the product." (316 F. Supp at 350) 

The Sears and Compco cases, supra, involved suits for 

damages and injunctive relief under the Illinois "unfair competition" statute with respect to the copying of designs for lighting fixtures which were either unpatentable or unpatented. In 

this situation the Supreme Court held that the Illinois statute 

could not be applied constitutionally to prevent the copying of 

these designs even though the products were virtually identical. 

However, the Supreme Court expressly reserved to the States the 

right to prohibit practices such as here involved. In the Compco 

case, the Supreme Court specifically restricted its ruling as 

follows: 

"As we have said in Sears, while the 

federal patent laws prevent a State from 

prohibiting the copying and selling of unpatented articles, they do not stand in the 

way of state law, statutory or decisional, 

which requires those who make and sell 

copies to take precautions to identify their 

products as their own. A State of course 

has power to impose liability upon those who, 

knowing that the public is relying upon an 

(2) Sells any such article with the knowledge that the 

sounds thereon have been so transferred without the consent 

of the owner." 

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Honorable W. T. McDonald, Jr., page 6 (M-1114) 

original manufacturer's reputation for quality 

and integrity, deceive the public by palming 

off their copies as the original." 

An appropriate area for State legislation was found 

to exist by the three judge court in the Tape Industries case, 

~"~~~e 

which was not precluded by the Sears and Compco decisions. 

351 of the opinion the Court held: 

"Undoubtedly, tape pirates are costing 

legitimate and authorized tape producers 

substantial amounts of money, and the State 

of California has properly and reasonably 

concluded that these parasitic tape pirates 

must be controlled. Regardless of whether 

Calif. P.C. 5653h (1968) is deemed a larceny statute or an unfair competition law, 

it is clear that the California Legislature 

is not precluded by the Federal Copyright 

aws rom rohibitin the activities o 

$pel&a'&. 'Nor'szould we intervenefin 

t e egitimate enforcement of the statutorily expressed desires of the California 

Legislature by the authorized prosecution 

officials who are the defendants." (Emphasis supplied.) 

Recently, on February 29, 1972, in Civil Action No. 

3-5536-A, styled Independent Tape Merchant's Association v. 

Crawford Martin, et al., filed in the United States District 

Court for the Northern District of Texas, a suit similar to the 

Tape ,Industries case, to enjoin the enforcement of Art. 1137r, 

Vernon's Penal Code, was dismissed by the court on the finding 

that: 

I, 

. . . this Court should not interfere 

with the state criminal court's enforcement of state law under the circumstances 

as set forth by plaintiff in this action, 

II 

. . . . 

Finally, it should be observed that while the situation under the Patent Act, 35 USC 55 l-293, is one of either 

protection or no protection, a different situation is presented 

by the Copyright Act, 17 USC 55 l-215, even as amended, in that 

under 52 of the Act provision is made for protection of socalled "common law" copyrights. 5 The weight of authority is 

5"Nothi.ng in this title shall be construed to annul or limit 

the right of the author or proprietor of an unpublished work, 

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. . . 

Honorable W. T. McDonald, Jr., page 7 (M-1114) 

that the giving of a performance and the sale of a recording 

does not constitute publication, Columbia Broadcasting Systems, 

Inc. v. Documentaries Unlimited, Inc., supra (news reports), 

Metropolitan Opera Association, Inc. v. Waqner Nichols Recorder 

01 N.Y.S. 2d 483 (Sup. Ct. 1950) ff'd ., 

2d 795 (1951) (opera broadczsts); 

from other "masters", Capitol Records, Inc. v. Mercury Records 

Corp., 109 F. Supp. 33'b (S.D.N.Y. 1952); RCA v. Premier Albums, 

Inc., 19 App. Div. 2d 62, 240 N.Y.S. 2d 995 (19 ) ; from phonograph records sold to the public, Capitol Recorii, Inc. v. Greatest Records, I 

supra; Capitol 

The opposite view is taken in Grans v. Harris, 98 F. 

SUPP. 906 (S.D.N.Y. 1951); McIntyre v. Double A. Music Co., 166 

F. Supp. 681 (C.D. Cal. 1958); Mills Music v. Cromwell Music Co., 

126 F. Supp. 54 (S.D.N.Y. 1954); Shapiro, Bernstein & Co. v. 

Miracle Record Co., 91 F. Supp. 473 (N.D. Ill. 1950). It is 

resoectfullv submitted that these cases are cited because thev 

erroneously-fail to recognize the distinction between "copying" 

and "appropriating". Here we are not concerned with a situation 

where the recordings are being imitated but rather the actual 

sounds, the performance itself, is being appropriated. Each of 

the cases cited above rely on RCA Manufacturing Co. v. Whitman, 

114 F2d 86 (2nd Cir. 1940) for their result. However, this case 

was expressly overruled in Capitol Records, Inc. v. Mercury Reco;d;o;;:phLl~~l F2d 657 (2nd Cir. 1955). Therein at page 663 

"Our conclusion is that the quoted statement from the RCA case is not the law of the 

State of New Yx. 

"Since its decision the New York courts 

have had close contact with the question in 

Metropolitan Opera Assn. v. Wagner Nichols 

Recor er Cor ., 99 Misc. 786 101 

2d 483, Id., 279 App. Div. 63;, 107"l%. 

2d 795. We believe that the inescapable 

result of that case is that, where the originator, or the assignee of the originator, 

of records of performances by musical artists 

at the common law or in equity, to prevent the copying, publication, or use of such unpublished work without his consent, 

and to obtain damages therefor." 

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. . 

Honorable W. T. McDonald, Jr., page 8 (M-1114) 

puts those records on public sale, his act 

does not constitute a dedication of the 

right to copy and sell the records." 

A very excellent annotation is contained in 40 ALR 3d 

553, following Capitol Records, Inc. v. Erickson, supra, which 

may be referred to for a rather more extensive treatment of this 

whole subject. Noteworthv is the citation in the court's opinion 

in the ErEckson case, 40 ALR 3d at 561, to Pottstown Daily News 

Publishing Co. v. Pottstown Broadcasting co., 11 Pa. 383 192 

A2d 657, 662 (1963) which holds that while unfair competi&on 

law originally related to "palming off" of one's goods as those 

of another, "In recent years its scope has been extended. It 

has been held to apply to misappropriation as well as misrepresentation", quoting-from A.L.AI-S;hechter Poultry Corp. v. United 

States, 295 U.S. 495, 531-532 (19 5) . 

The courts of the State of Texas have apparently long 

recognized the distinction between copying and appropriation. In 

Gilmore v, Sammons, 269 SW 861 (Tex. Civ. App. 1925, writ dism.), 

it was held that aonrooriation of news items bv a comuetitor 

constituted unfair‘kompetition under the doctrine of International 

News Service v. Associated Press, 248 U.S. 215 (1918). On the 

other hand the simulation of a sportinq event broadcast by a 

non-comoetitor to the oriainal broadcaster was found not to constitute-unfair competition, and the Gilmore case, supra, was 

distinguished. See Loeb v. Turner, 257 SW2d 800 (Tex. Civ. App. 

1953, no writ). 

In conclusion, our opinion is that by the enactment 

of Article 1137r, the 62nd Legislature has done no more than 

the California Legislature did in its passage of 6 653h, P.C. 

and such constitutes the adoption of either an unfair competition 

law or a theft statute which has been held in the Tape Industries case, supra, to constitute a valid exercise of the State's 

legislative powers and not to constitute any undue interference 

or conflict with the federal copyright policy devised pursuant 

to the Constitutional authority of Congress in the Copyright 

Act, 17 USC 65 l-215. 

SUMMARY 

It is our opinion that Article 1137r, 

Vernon's Penal Code, is valid and is not 

in conflict with Art. I, Sec. 8, Cl. 8, 

United States Constitution, or the Copyright Clause, and the implementing federal 

statutes, 19 USC 55 l-215, the Copyright 

Act. 

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. . . 

HOnOrabl8 W. T. McDonald, Jr., page 9 (M-1114) 

truly yours, 

d* 

C. MARTIN 

General of Texas 

PREPARED BY: 

Van Thompson, Jr. 

Assistant Attorn8y General 

APPROVED: 

OPINION COMMITTEE 

Kerns Taylor, Chairman 

Bill Allen, Co-Chairman 

Scott Garrison 

Roland Allen 

Houghton Brownlee 

Ralph Rash 

Wayne Rodgers 

SAMUEL D. MCDANIEL 

Staff Legal Assistant 

ALFRED WALKER 

Executive Assistant 

NOLA WHITE 

First Assistant 

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