*

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. 

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
 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

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
 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

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

(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
 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

Susan M. Deas, Jazzing up the Copyright Act? Resolving the Uncertainties of the United States AntiBootlegging 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."
 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

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
 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. 

 10Congress'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

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)
8

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.
9

 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
 11The 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

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

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,
12

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
13

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
14

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.
15

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 TradeMark 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
 12We 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). 

 13In 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

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 TradeMark 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
17

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.
 14Our 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). 

 15Moghadam 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

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
 16Because we find no such inconsistency, we need not decide the consequences if there were

inconsistency. See note 12, supra. 

 17As 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. 

 18We reject Moghadam's other arguments on appeal without need for discussion. 

19

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.