IP Law Daily High Court asked to determine whether DMCA safe harbor applies to ‘oldies but goodies’
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Friday, December 16, 2016

High Court asked to determine whether DMCA safe harbor applies to ‘oldies but goodies’

By Jody Coultas, J.D.

Capitol Records, LLC and other music recording companies have filed a petition for certiorari urging the Supreme Court to overturn a Second Circuit ruling that the Digital Millennium Copyright Act (DMCA) safe harbor provision applies to sound recordings made before 1972.

Approximately 43,000 new videos are uploaded to Internet service provider Vimeo, LLC each day. Vimeo followed a practice of screening the visual content of posted videos for infringement of films, it did not screen the audio portions for infringement of sound recordings. The plaintiffs contended that this fact, together with statements made by Vimeo employees, showed indifference and willful blindness to infringement of recorded music, and that Vimeo has furthermore actively encouraged users to post infringing videos.

The music recording companies filed suit against Vimeo for direct, contributory, vicarious, and common law copyright infringement, as well as for inducement to infringe copyright and unfair competition, specifically in connection with 199 allegedly infringing videos uploaded to Vimeo’s website.

On June 16, the U.S. Court of Appeals in New York City ruled that the safe harbor protects service providers from infringement liability under state copyright laws, rejecting a district court’s finding that the safe harbor provided by Section 512 of the DMCA was not applicable to sound recordings fixed prior to 1972 because these were protected by state, rather than federal, copyright laws.

Section 301(c) of the Copyright Act provides that rights or remedies under the common law or statues of any state shall not be annulled or limited by the Copyright Act with respect to sound recordings fixed before February 15, 1972.

Capitol Records has asked the Court to decide whether the Second Circuit erred in holding, contrary to the view of the Copyright Office and in conflict with New York appellate courts, that when Congress enacted the DMCA and added Section 512 to the Copyright Act, it implicitly limited and preempted the state laws that Section 301(c) says "shall not be annulled or limited."

Capitol Records argues that the appellate court’s decision has created a split between the Second Circuit and New York state courts. In New York, according to the petition, the DMCA’s safe harbor provisions does not apply to pre-1972 recordings. Rather, New York state law governs unauthorized uses. This split arguably makes it impossible for pre-1972 sound recording copyright holders and Internet service providers to know the legal rules governing their conduct. Also, Capitol Records argues that, based on previous Supreme Court rulings, the Second Circuit had no authority to read the DMCA as having silently modified Section 301(c).

The petition also argues that the decision "does violence to the legislative design and to the property rights of owners of pre-1972 sound recordings by diminishing owners’ sole recourse for unauthorized uses of the recordings."

Attorneys: Carter G. Philups, Kwaku A. Akowuah, Rebecca S. Levenson, and Constantine L. Trela, Jr. (Sidley Austin LLP) and Russell J. Frackman and Marc E. Mayer (Mitchell Silberberg & Knupp LLP) for Capital Records, LLC.

Companies: Capital Records, LLC; Vimeo, LLC

MainStory: TopStory Copyright TechnologyInternet NewYorkNews

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