People v. Williams, Docket No. 105453 (Ill. 2009)

The Illinois Supreme Court issued an interesting decision on November 19. The State of Illinois alleged that a Defendant [1] intentionally or knowingly offered for sale sounds recorded on CDs and DVDs without the consent of the owner of the master recording, and [2] failed to identify the manufacturer of the CDs and DVDs he offered for sale. 720 ILCS 5/16-7, 16–8.

To briefly review, the Copyright Act first granted performers exclusive rights in sound recordings on February 15, 1972. Before that date, if a performer wanted to bring suit for the unauthorized reproduction or distribution of a sound recording, her only option was to  bring suit under a state provision or, perhaps, a state common law claim.  See Metropolitan Opera Association, Inc., et al., and Columbia Records, Inc., v. Wagner-Nichols Recorder Corporation et al., 101 N.Y.S.2d 483 (1950).  The Sound Recordings Act of 1971 only applies prospectively, and not to recordings published before February 15, 1972.

The first issue before the Illinois Supreme Court: Is a state claim for the illegal sale of post-1972 recordings preempted by the Federal Copyright Act?

Presumption against preemption

The Illinois Supreme Court first addressed whether there was a presumption against preemption.  The Court cited  Sprietsma v. Mercury Marine, 197 Ill. 2d 112, 117 (2001), rev’d on other grounds, 537 U.S. 51, 154 (2002), for the proposition that while there is “generally” a presumption that state police powers are not superseded by federal law, the presumption doesn’t apply if federal concerns predominate. The Court found that there was no presumption against preemption:

Because the question in this case is whether Congress has expressly preempted the field in an area where it unquestionably has always had at least shared concurrent jurisdiction (never mind the passage of an expressed preemption provision in 1976), and Illinois had not traditionally exercised authority in the area of sound recordings, we conclude that protection of sound recordings is more traditionally within the realm of federal protection in Illinois and . . . federal concerns predominate in this area. Accordingly, there is no presumption in favor of nonpreemption in this case.

Preemption

The Illinois Supreme Court loosely applied the Seventh Circuit’s extra element test and found that the Illinois criminal provision was expressly preempted, as applied to post-1972 sound recordings, by the Federal Copyright Act. See Baltimore Orioles, Inc. v. Major League Baseball Players Ass’n, 805 F.2d 663, 674 (7th Cir. 1986). The Court looked to the language of the Copyright Act; legislative history;  other federal and state case law; and the findings of other state legislatures as evinced by how they have drafted criminal sound recording provisions.

First Amendment and overbreath

The Defendant next argued that Section 16-8 (which made it a crime for a person to profit in recordings if the labeling or packaging on the recording does not display the name and address of the manufacturer and the name of the performer) should be stricken because it was overbroad in violation of the First Amendment.  The Illinois Supreme Court rejected the argument finding that section 16–8 could be applied constitutionally in most instances, and that the Defendant made no showing that the burden on protected speech was  substantial as compared to the legitimate applications. The Court also rejected a due process challenge to the Statute.

Comments:

• The Illinois Supreme Court made it explicitly clear in a couple of places that the Defendant only argued express preemption under 17 U.S.C. 301,  and not implied preemption or conflict preemption (perhaps hinting that implied or conflict preemption could have played a role, if timely argued, in other places in the opinion.)