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No Copyright Safe Harbor Under DMCA for ISPs for Pre-1972 Sound Recordings

The highest State Court in New York held that the Digital Millennium Copyright Act (“DMCA”) safe harbor protections do not apply to pre-1972 sound recordings.  UMG Recordings, Inc. v. Escape Media Group, Inc., Case No. 100152/10, 9099 (NY App. Div. 1, April 23, 2013) (available here).  Plaintiff UMG Recordings (“UMG”) appealed the lower court’s denial of its motion to dismiss Defendant Escape Media Group’s (“Escape”) affirmative defense under the DMCA which alleged that the DMCA safe harbors do not apply to recordings made before 1972.  On appeal, the Court reversed the lower court and agreed with UMG that the DMCA does not provide a safe harbor protection for sound recordings before 1972.

Escape developed, owns, and operates GrooveShark, which is an online music streaming service.  Users of GrooveShark upload audio files to an archive maintained on Escape’s servers and other users can search and stream recordings from Escape’s servers.  GrooveShark has some procedures in place to prevent copyright infringement, such as licensing agreements with several large-scale owners and licensees of sound recordings.  The DMCA offers safe harbor protections to operators of internet services, commonly referred to as “ISPs”.  UMG owns copyrights to many songs uploaded to GrooveShark, many of which were recorded prior to 1972.  That year, 1972, is significant because the Copyright Act was amended in 1972 to extend federal copyright protection only to recordings “fixed” on or after February 15, 1972.

UMG sued Escape for copyright infringement.  Escape asserted the safe harbor protections under the DMCA.  UMG moved to dismiss Escape’s safe harbor defense, arguing that the DMCA could not apply to the pre-1972 recordings because that would conflict with § 301(c) of the Copyright Act, which states that nothing in the Act would “annul” or “limit” the common-law copyright protections to any pre-1972 sound recordings.  See 17 U.S. C. § 301(c) (“[w]ith
respect to sound recordings fixed before February 15, 1972, any rights or remedies under the common law or statutes of any State shall not be annulled or limited by this Title until 2067”).  The lower court denied UMG’s motion, holding that “although § 301(c) is an anti-preemption provision ensuring that the grant of federal copyright protection did not interfere with common-law or state rights established prior to 1972, that section does not prohibit all subsequent regulation of pre–1972 recordings.”  UMG, Slip Op. Pp. 6-7.

On appeal, UMG argued that if the DMCA gave Escape safe harbor protection for the pre-1972 recordings, that protection effectively repealed § 301(c) of the Copyright Act.  UMG described § 301(c) as creating “reverse preemption” of state law copyright remedies.  In other words, Congress was not permitted to trample on the state of common-law copyright laws.  UMG also argued that the lower court ignored the DMCA’s provision that a copyright infringer is anyone who violates any of the Copyright Act exclusive rights found in sections 106 through 122 and, because these sections refer to works fixed after February 15, 1972, a copyright infringer is not entitled to the DMCA safe harbor protections on works fixed before February 15, 1972.  Escape argued that any references in the DMCA to copyrights and infringement are generic terms and that Congress did not intend to limit the DMCA’s reach to works covered by the Copyright Act.  Escape also argued that the “DMCA does not annul or limit any of UMG’s rights in the pre-1972 recordings, because, notwithstanding the DMCA’s safe harbor provisions, UMG still retains its common-law rights in those works, such as the ability to exploit the works, license them and create derivative works.”  UMG, Slip Op. P. 11.

The Court looks at the intent of the legislature in enacting the DMCA.  “Initially, it is clear to us that the DMCA, if interpreted in the manner favored by defendant, would directly violate section 301(c) of the Copyright Act. . . were the DMCA to apply as defendant believes, that right to immediately commence an action would be eliminated. Indeed, the only remedy available to UMG would be service of a takedown notice on defendant.”  UMG, Slip Op. P. 13.  In order for Escape’s argument to prevail, the Court would have to conclude that Congress intended to modify § 301(c) when it enacted the DMCA.  However, there is nothing suggesting that this was Congress’s intent.  “Congress explicitly, and very clearly, separated the universe of sound
recordings into two categories, one for works ‘fixed’ after February 15, 1972, to which it granted federal copyright protection, and one for those fixed before that date, to which it did not. Defendant has pointed to nothing in the Copyright Act or its legislative history which prevents us from concluding that Congress meant to apply the DMCA to the former category, but not the latter.”  UMG, Slip Op. P. 14.

The Court rejected Escape’s contention that the purpose of the DMCA would be “thwarted” if it was determined not to apply to pre-1972 recordings.  “The statutory language at issue involves two equally clear and compelling Congressional priorities: to promote the existence of intellectual property on the Internet, and to insulate pre-1972 sound recordings from federal regulation. As stated above, it is not unreasonable, based on the statutory language and the context in which the DMCA was enacted, to reconcile the two by concluding that Congress
intended for the DMCA only to apply to post-1972 works.”  UMG, Slip Op. P. 16.  The Court therefore reversed the dismissal of UMG’s motion.

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