Imagine There’s No Safe Harbor: Does the DMCA Apply to pre-1972 Sound Recordings?

LennonVimeo, the online video service, is seeking leave to appeal to the Second Circuit  on the issue of whether sound recordings made prior to 1972 are covered by the safe harbor provisions of the Digital Millennium Copyright Act (DMCA). As a practical matter, affirmance by the Second Circuit would mean that an otherwise DMCA-compliant internet service provider (ISP) could be immune from liability for copyright infringement if one of its user videos infringes John Lennon’s 1973 Mind Games, but not if the same video also infringes Lennon’s 1971 ImagineGiven the monitoring and enforcement complications that may follow, ISPs are understandably nervous.

According to a 2011 Copyright Office report, copyright protection for sound recordings, as opposed to the underlying musical compositions, has always been a tricky subject. Prior to 1972, there was no protection other than a  patchwork of state and common law remedies. Then, on February 15, 1972, the Sound Recording Amendment became effective, providing limited federal protection with respect to the illegal duplication of sound recordings.  This protection was folded into the 1976 Copyright Act a few years later.  However, for some reason – some say by accident – the federalization of this protection only applied prospectively.  Section 301(c) of the Act provided that:

With 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 February 15, 2067.

Flash forward to the internet era. Vimeo was supposed to be the non-infringing antidote to other sites, but inevitably many of its users posted videos containing recordings of copyrighted songs.  In 2009, Capitol Records and others brought suit against Vimeo in the Southern District of New York, alleging infringement of their sound recording rights by 199 different Vimeo videos.

Of course, under the DMCA, Vimeo and other ISPs have a great defense to precisely this kind of claim.  As long as an ISP has complied with the takedown provisions of the DMCA and didn’t have prior knowledge of the infringement by its users, the DMCA provides the ISP with a safe harbor from claims for damages.  Now, it turns out that, with respect to some of the videos in this case, Vimeo indeed may have had knowledge: its employees commented on and “liked” some of the videos in suit.  But with respect to the rest of the videos, Vimeo is immune from liability for that infringement, right?

Not so fast, held Judge Ronnie Abrams in her recent opinion denying Vimeo summary judgment for the pre-1972 songs.  According to Judge Abrams, since the DMCA safe harbor can be regarded as an “annulment or limitation” of remedies that otherwise would have been available (i.e., damages), it can’t apply to pre-1972 songs.  Judge Abrams acknowledged that there was “no reason” why the DMCA safe harbor should not apply, but the plain language of Section 301(c) said it did not. In other words, it’s up to Congress to fix its own mess, not the courts.

Vimeo has brought a motion to reconsider and for permission to appeal the issue to the Second Circuit.  Vimeo points out that another SDNY judge, Hon. William H. Pauley, came to the opposite conclusion on the same issue in Capitol Records , Inc. v. MP3tunes, in part because any other outcome would be really, really confusing and messy. Vimeo is also challenging the Court’s denial of summary judgment on the issue of whether it had knowledge of infringement. Oral argument on the motion will be held on November 15, 2013.

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