06 July 2006

Another Good Knock-Down Argument

(Impetus to go public with a long-simmering diatribe: Denise Howell's Bag & Baggage) I've been shaking my head at Dastar for quite a while (even before the first Supreme Court opinion), because I think it presents a constitutional issue that the parties have refused to confront. It comes down to this:

Did Congress have the constitutional power to redefine the term "author" in the IP Clause to mean "patron"?

The IP Clause explicitly grants rights to "authors". That's pretty obvious. The work-for-hire (WFH) doctrine — under whatever test one chooses, under either the 1909 Act or 1976 Act — defines the "author" of a WFH as the party who paid for the work, not the party who created the work. In Renaissance/Enlightenment understanding, that was the "patron." Nobody pretends, for example, that the "author" of Mozart's early works was the Prince-Archbishop of Salzburg — and there's no question that Mozart was an employee, nor that his compositions were within the scope of his duties as an employee. (Whether this might violate modern child labor laws is another issue…) Similarly, nobody pretends that the copyrights (such as they were) in Poor Richard's Almanack belonged not to Ben Franklin, but to his publishing company.

OK, so Congress redefined a term. The problem is that Congress may not have that power: That power belongs to the courts, excepting only when the Necessary and Proper Clause can be invoked in support of an enumerated power.1 This time, though, we are dealing with an enumerated power. Defining "black" as "white" should not pass muster — and, since the Statute of Anne (which was the model for the first Copyright Act, and was cited repeatedly in Madison's notes and by implication in the Federalist Papers as the inspiration for the IP Clause) explicitly denied patron ownership of copyrights, it seems to me that the parties need to at least address this issue.

The practical difficulty is that they won't, because it's not in the interest of either party to object to the "part of a motion picture" aspect of the § 101 definition. Instead, due to their aligned self-interests they're fighting it on the facts, which is actually a losing strategy for both sides; the litigation costs will vastly exceed any actual or statutory damages available, but the parties (or their insurers) are probably encouraged by the possibility that the prevailing party could recover attorney's fees. Unfortunately, under the test in Fogerty v. Fantasy, that's not going to happen for either side.2

One way out of this dilemma is the claim that the WFH doctrine represents a Commerce Clause gloss on the IP Clause; that is, Congress's oversight over interstate commerce allows it to alter its implementing legislation to account for the commercial "realities" of copyright exploitation and control. After all, some parts of the Copyright Act clearly were authorized by the Commerce Clause, not the IP Clause.3 Leaving aside the circular nature of this argument, though, we come to a much more difficult question: Can Congress rely upon the Commerce Clause to contradict an enumerated power? This is at least open to question.4

Yes, I am (slowly) working on a law-review-type article on this morass. Perhaps it's a bit too inspired by Humpty Dumpty's definition of "glory"; or, perhaps, it's a bit too inspired by too many years inside the foreign-policy apparatus that I can't discuss in detail. You may, of course, substitute your own verb for "inspired," but I probably don't want to hear about it!

  1. E.g., McCulloch v. Maryland, 17 U.S. 316 (1819).
  2. See, for example, Judge Cooper's unreported analysis in Ellison.
  3. Professor Patry has remarked:

    The [bootleg recording] legislation was enacted deliberately under Congress's Commerce Clause powers. We did so because of doubt that an unfixed performance was a writing and therefore encompassed by Congress's Copyright Clause power. Evidence of legislating under the Commerce Clause is seen in Section 1101(a), which states that a violator of the right "shall be subject to the remedies provided in sections 502 through 505 to the same extent as an infringer of copyright." Obviously, if we had regarded the right as a "copyright" right (in the broadest sense), the italicized language would have been unnecessary, even wrong. Second, we made the right perpetual, both because we saw no need to limit it and as another obvious sign that we weren't legislating under the Copyright Clause.

    " The Constitutionality of the Bootleg Statute" (18 May 2005) (italics in original). The key distinction between the bootleg statute and the WFH doctrine is that, as Professor Patry notes, the bootleg statute operates outside the subject matter of the IP Clause. However, the WFH doctrine operates squarely within the IP Clause. See 17 U.S.C. § 201(b) ("In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title…").

  4. See, e.g., Railway Labor Executives Assn. v. Gibbons, 455 U.S. 457 (1982) (Congress may not undermine the uniformity requirement of the Bankruptcy Clause by relying upon the Commerce Clause). There's also a line of cases on wiretapping in the 1960s and 1970s that heroically (or, perhaps, antiheroically) struggles to avoid interpreting Title III under the same rubric.