Hicks v. State

¹¹⁷ WILNER, Chief Judge. After a non-jury trial in the Circuit Court for Harford County, appellant was convicted of having violated Md.Code art. 27, § 467A(b). That section makes it unlawful for any person “to sell, rent, distribute, circulate, offer for sale, rental, distribution, or circulation, or possess for the purpose of sale, rental, distribution, or circulation, any phonograph record, disc, wire, tape, film, videocassette, or other article on which sounds or images have been transferred or stored unless the phonograph, record, disc, wire, tape, film, videocassette, or other article bears the actual name and street address of the transferor of the sounds or images and the name of the actual performer or group in a prominent place on its outside face or package.” For that violation, appellant received a one-year suspended sentence and two years probation. He was also fined $2,500 and directed to pay court costs.

In addition, certain property of his that had been seized was declared forfeit. In this appeal, appellant complains that (1) art. 27, § 467A(b) is preempted by the Federal Copyright Act of 1976, 17 U.S.C. § 101 , et seq., (2) his indictment was so facially defective as to deny him due process, (3) his motion to quash, suppress, and return physical evidence seized by police should have been granted, (4) the evidence was insufficient to support his conviction, and (5) the forfeiture of his property without a hearing or trial was error. Each of those arguments will be addressed below. UNDERLYING FACTS On June 18,1993, upon application by State Police Sergeant James Wright, a judge in Harford County found probable cause to believe that an adult book store known as The Depot, located at 1634 Pulaski Highway in Havre de Grace, contained unauthorized recorded copies of X-rated adult video tapes, legitimate tapes used to produce the unauthorized copies, video recording equipment used in the unauthorized copying, ¹¹⁸ blank VHS videocassettes, equipment used to produce labels, blank labels, and documents revealing both the sale and rental of unauthorized copies of videocassette tapes and the identity of employees engaged in committing acts in violation of § 467A.

In essence, there was evidence of a pirating operation—the unauthorized copying of legitimate videocassette tapes for sale or rental. The judge therefore issued a warrant authorizing the search of that premises , for the items noted and the seizure of any such items found, provided that not more than 100 unauthorized cassettes and not more than 24 blank cassettes could be seized. The warrant was executed the same day and resulted in the seizure of items pertaining to 53 video tape cassettes. As to each, the police seized what they regarded as an authorized, legitimate copy of the cassette, a box for that cassette, an unauthorized copy of the cassette, and a box for the unauthorized copy.

In addition, the police seized 21 videocassette tape players and five television display monitors. On June 4, 1993—two weeks before the issuance and execution of that warrant—in an entirely separate landlord-tenant dispute, John Philip, Inc., the owner of property at 3011-B Pulaski Highway, in Edgewood, had the Harford County Sheriff levy execution on property of Heather D & M Corporation, the tenant operating at that location. Among the items seized in that levy were magazines, videotapes, and other assorted adult material. The attorney for the landlord, concerned whether some of the items might be legally obscene and therefore not susceptible to sheriffs sale, contacted the State’s Attorney and invited him to examine the material.

That was done, and eventually the sheriff was directed to store the material. No warrant was ever sought or issued with respect to those items. The common element in these two “seizures” was the fact that the property seized belonged to T & A Leasing, Incorporated, of which appellant was the manager. T & A operated out of appellant’s home as well as in the basement of The Depot; it supplied the tapes rented and sold by The Depot. ¹¹⁹ It also supplied the tapes to Heather D & M Corporation that had been seized under the levy.

On December 28, 1993, a two-count indictment was returned against appellant. Count I, charging a violation of § 467A(b), alleged that, between May 4 and July 3, 1993, appellant “unlawfully did sell, rent, distribute, offer for sale and rental and possess for the purposes of sale, rental and distribution, videocassettes which did not bear the name and address of the transferor of the sounds and images and the name of the actual performer in a prominent place on its outside face and package in violation [of § 467A].” 1 Following that indictment, appellant demanded a bill of particulars, among other things to set forth detailed information with respect to each videocassette included within the indictment. He also moved to suppress the evidence seized from both locations and to dismiss the indictment on the ground of Federal preemption. In a well-written Memorandum Opinion and Order filed September 6, 1994, Judge Close rejected appellant’s requests.

He found that appellant had no standing to complain about the seizure of tapes from the Edgewood property because those tapes were all located on open shelves in the public area of the store and there was, accordingly, no reasonable expectation of privacy on appellant’s part. Judge Close rejected the motion to suppress the tapes seized from The Depot on the ground that the warrant authorizing the seizure was supported by adequate probable cause. Finally, for our purposes, he concluded that § 467A(b) was not preempted by the Federal Copyright Act. The case was tried on a stipulated record, i.e., appellant agreed that certain witnesses, if called, would testify as proffered by the prosecutor.

That was supplemented by various exhibits admitted into evidence. We turn now to the issues raised by appellant. ¹²⁰ PREEMPTION—FEDERAL COPYRIGHT ACT Appellant first contends that the Federal Copyright Act of 1976, 17 U.S.C. § 101 , et seq., preempts Md.Code art. 27, § 467A(b) and, therefore, his conviction under that statute must be reversed. We disagree. By way of introduction, we note that § 467A(b) is part of a broader statute proscribing the unauthorized transfer and recording of sounds and images.

Section 467A(a)(l) makes it unlawful for a person knowingly to transfer sounds recorded on one recording to any other recording, for the purpose of sale for profit, without the consent of the owner of the original fixation of sounds on the master recording. Subsection (a)(2) prohibits the recording of sounds or images from a live, radio, or televised performance, for the purpose of sale for profit, without the consent of the performer. Subsection (a)(3) makes it unlawful for a person to distribute, offer for distribution, or possess for purposes of distribution any recorded article to which sounds have been transferred in violation of subsection (a)(1) or (a)(2). Section 467A(b) assists in implementing those provisions in subsection (a) by requiring all recordings to which sounds or images have been transferred to contain, on the face or package of the recording, the name and address of the transferor and the name of the performer.

This, of course, makes it easier for consumers and law enforcement agents to determine whether a particular recording offered for sale or rent is a “pirated” product. Art. I, § 8, cl. 8 of the Federal Constitution grants to Congress the power “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” That provision is the underpinning for Federal copyright and patent laws. From the beginning, the power to define and protect literary property was regarded as a concurrent one shared by the Federal and State governments; the Constitutional provision did not, of itself, vest exclusive control over the field to ¹²¹ Congress. See Wheaton v. Peters, 33 U.S. (8 Peters) 591, 604, 8 L.Ed. 1055 (1834).

Indeed, until the enactment of the Copyright Act of 1976, Federal law, for the most part, protected only certain kinds of published works; it was State law, to the extent it existed, that protected unpublished works. 2 The authority of Congress under the Constitution to preempt State law was not disputed, but, since the first copyright law was enacted in 1790, Congress had simply chosen not to exercise that authority. See Goldstein v. California, 412 U.S. 546, 560 , 93 S.Ct. 2303, 2311 , 37 L.Ed.2d 163 (1973), upholding a California statute punishing the unauthorized transferring of sounds recorded on phonograph records and tapes. The question before us is whether, and to what extent, through the Copyright Act of 1976, Congress has effectively preempted the area of regulation covered by § 467A(b). When exercising a Constitutional authority granted to it, Congress may effect a preemption of State law in three different ways—by expressly stating its intention to preempt, by enacting a scheme of regulation sufficiently comprehensive as to “occupy a given field or to make clear that Congress left no room for supplementary state legislation,” or by enacting legislation in actual conflict with State law.

Board of Trustees v. City of Baltimore, 317 Md. 72, 115 , 562 A.2d 720 (1989), cert. denied 493 U.S. 1093 , 110 S.Ct. 1167 , 107 L.Ed.2d 1069 (1990). Preemption is not lightly presumed; the party claiming it bears the burden of proof. Id. at 115-16, 562 A.2d 720 . ¹²² In § 301 of the 1976 Copyright Act, Congress has expressly declared its intention with respect to preemption. Section 301(a) states: “On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title.

Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.” (Emphasis added.) Section 301(a) constitutes an express preemption, but one that is limited in scope. In § 301(b), Congress made clear that subsection (a) did not annul or limit any State rights or remedies with respect to, among other things, “(3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106.” (Emphasis added.) Section 301, therefore, preempts State law when (1) the subject of the State law falls within the subject matter of the Copyright Act, i.e., §§ 102 and 103 of that Act, and (2) when the State law creates rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by § 106. There is no dispute that videocassettes—the subject of § 467A(b) relevant to this case—are within the scope of § 102 of the Copyright Act. Section 102(a)(6) and (7) provide that copyright protection exists in “original works of authorship fixed in any tangible medium of expression ... from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device,” including works of authorship in “motion pictures and other audiovisual works” and “sound recordings.” ¹²³ The issue hinges on § 106.

Section 301(a) preemption applies to legal and equitable rights that are “equivalent” to any of the exclusive rights within the general scope of copyright specified in 106; the non-preemption stated in § 301(b), conversely, applies to activities violating legal or equitable rights that “are not equivalent” to the exclusive rights encompassed within § 106. Section 106 grants to the copyright holder the exclusive rights: “(1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; (4) in the case of literary, musical, dramatic, or choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; and (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly.” Section 467A(b) does not directly add to, emulate, modify, or inhibit any of those rights. It prohibits various forms of distributing, or possessing with intent to so distribute, enumerated items, including videocassettes, on which the sounds or images have been transferred or stored unless the item bears, on its outside face or package, the name and address of the person transferring those sounds or images and the name of the performer. The question, of course, is whether that constitutes an “equivalent” right or prohibition.

As S. 22—the bill that became the Copyright Act of 1976— passed the Senate and was reported out of the House Judicia ¹²⁴ ry Committee, § 301(b)(3) had some additional language in it. It made clear that the Act did not preempt “activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106, including rights against misappropriation not equivalent to any of such exclusive rights, breaches of contract, breaches of trust, trespass, conversion, invasion of privacy, defamation, and deception trade practices such as passing off and false representation____” (Emphasis added.) The Senate and House Judiciary Committee Reports commented on the scope of § 301(b), including the examples then included in § 301(b)(3). They noted first: “In a general way subsection (b) of section 301 represents the obverse of subsection (a). It sets out, in broad terms and without necessarily being exhaustive, some of the principal areas of protection that preemption would not prevent the States from protecting.” Turning then to subsection (b)(3) in particular, the Committee, Reports stated that the examples in that clause “while not exhaustive, are intended to illustrate rights and remedies that are different in nature from the rights comprised in a copyright and that may continue to be protected under State common law or statute.” Specifically, “[t]he last example listed in clause (3)—‘deceptive trade practices such as passing off and false representation’— represents an effort to distinguish between those causes of • action known as ‘unfair competition’ that the copyright statute is not intended to preempt and those that it is.

Section 301 is not intended to preempt common law protection in cases involving activities such as false labeling, fraudulent representation, and passing off even where the subject matter involved comes within the scope of the copyright statute” (Emphasis added.) When the bill emerged on the floor of the House of Representatives, on motion by Congressman Seiberling, the exam- ¹²⁵ pies included in subsection (b)(3) were deleted. It is clear from the debate on the motion, however, that the intent was not to circumscribe the exemption for false labeling, etc., but rather to address a concern of the Justice Department about the language dealing with “misappropriation,” which had too close a nexus to infringement. The intent was simply to remove the examples from the bill. See 122 Cong.Rec. 32015 (1976).

This, indeed, is how the courts and commentators have viewed the floor amendment. See National Car Rental v. Computer Associates, 991 F.2d 426, 433-34 (8th Cir.1993), cert. denied, — U.S. -, 114 S.Ct. 176 , 126 L.Ed.2d 136 (1993); Factors Etc., Inc. v. Pro Arts, Inc., 496 F.Supp. 1090, 1097 (S.D.N.Y.1980), rev’d on other grounds, 652 F.2d 278 (2d Cir.1981), cert. denied, 456 U.S. 927 , 102 S.Ct. 1973 , 72 L.Ed.2d 442 (1982); Mayer v. Josiah Wedgwood & Sons, Ltd., 601 F.Supp. 1523, 1533 (S.D.N.Y.1985); 1 M. Nimmer, The Law of Copyright, § 1.01[B][l][f] at 1-26—1-30 (1995). In determining whether a State law constitutes the “equivalent” of a right protected under § 106, the prevailing test seems to be whether the State law contains some “extra element” not included in § 106. Nimmer describes the test thusly: “[I]f under state law the act of reproduction, performance, distribution or display, no matter whether the law includes all such acts or only some, will in itself infringe the state-created right, then such right is preempted.

But if qualitatively other elements are required, instead of, or in addition to, the acts of reproduction, performance, distribution or display, in order to constitute a state-created cause of action, then the right does not lie ‘within the general scope of