For file-sharing sites, old songs are big new problem

By Alison Frankel
September 23, 2013

Off the top of your head, do you know whether the Jim Croce hit “Bad, Bad Leroy Brown” was recorded before February 15, 1972? How about Don McLean’s “American Pie”? Thankfully, most of us don’t need to clog our brains with the knowledge that Croce’s song was third on Billboard’s year-end chart in 1973 and McLean’s, recorded in late 1971, was third on the 1972 chart. But then, most of us aren’t Internet service providers that rely upon the safe harbor protections of the Digital Millennium Copyright Act of 1998. For Internet sites engaged in any kind of file-sharing, there’s now a deep gulch of potential liability dividing songs that came out before and after February 1972, when Congress passed the Copyright Act. And unless Congress acts to fill in the gap, video-sharing sites have to be very concerned about permitting users to upload files containing any old songs at all, for fear that they predate the Copyright Act.

That’s the consequence of a summary judgment ruling last week by U.S. District Judge Ronnie Abrams of Manhattan, in a case brought by recording companies against the video-sharing site Vimeo. Abrams ruled that although Vimeo is broadly entitled to DMCA safe harbor protection, the music companies may proceed with claims based on 55 potentially infringing videos either uploaded or otherwise publicly acknowledged by Vimeo staffers. The recording companies didn’t alert Vimeo that any of the videos breached copyrights, but the judge said that Vimeo staff may have known the IP was infringed or else disregarded red-flag warnings about misuse of copyrighted material. Judge Abrams also said that regardless of Vimeo’s anti-infringement policies and actions, there simply is no safe harbor under the DMCA when it comes to common-law copyright misappropriation claims based on songs that predate the federal Copyright Act. In combination, Abrams’ findings mean that Internet sites have no easy escape from litigation over files containing old songs, even when copyright owners don’t provide notice of infringement. If the ruling holds up, it would make more sense for sites simply to ban potentially actionable files rather than try to figure out whether songs in user-uploaded files were recorded before or after February 1972.

As Abrams explained in her decision, she is not the first court to consider the DMCA’s safe harbor protection for pre-1972 songs. In October 2011, her Manhattan federal court colleague William Pauley reached a different conclusion from Abrams in Capitol Records v. MP3tunes. The recording companies in the MP3 case, like those in the Vimeo case, argued that the DMCA can only protect defendants from federal copyright claims, not state or common-law claims, because the Copyright Act specified that it does not annul or limit IP rights that existed before its passage in 1972. Judge Pauley found that to be too cramped a reading of the Copyright Act. In context, he said, it’s clear that the Copyright Act wasn’t intended to prohibit all regulation of pre-1972 recordings; the law’s language on “infringement of copyrights” is meant to encompass violations of both federal and state protections, Pauley wrote. So the DMCA’s safe harbor, according to Pauley, similarly extends to alleged state and federal violations.

“Limiting the DMCA to recordings after 1972, while excluding recordings before 1972, would spawn legal uncertainty and subject otherwise innocent Internet service providers to liability for the acts of third parties,” the judge said. “After all, it is not always evident (let alone discernable) whether a song was recorded before or after 1972.”

More than a year after Pauley’s decision established first-of-its-kind precedent on safe harbor and old songs, the United States Copyright Office issued a report to Congress that disputed his reading of the Copyright Act. According to the December 2012 report on whether pre-1972 recordings should be subject to federal law, Pauley erroneously discerned congressional intent in the DMCA. “The court in MP3tunes not only ignored the plain text of the statute, it also ignored the general rule of statutory construction that exemptions from liability…must be construed narrowly,” the report said. “Any doubts must be resolved against the one asserting the exemption.” Under that “cardinal rule,” the report said, the DMCA’s safe harbor provisions cannot be assumed to override the Copyright Act because there’s no explicit indication that Congress intended them to do so. The report also said that as a matter of policy, there’s no reason why Internet service companies shouldn’t have safe harbor for users’ infringement of pre-1972 songs, but that it’s up to Congress to extend that protection.

Similarly, New York’s state appeals court ruled last April in UMG Recordings v. Escape Media that the plain language of the DMCA and the Copyright Act restrict safe harbor provisions to post-1972 songs. “We reject defendant’s argument that the very purpose of the DMCA will be thwarted if it is deemed not to apply to the pre-1972 recordings,” the state court said. “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…. 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.” The state court said it did not have to consider the authority of the Copyright Office’s report because it reached the same conclusion independently, though it said, like the Copyright Office, that Congress should clarify safe harbor protection if it’s meant to apply to pre-1972 songs.

Judge Abrams agreed in her very brief analysis of the issue in the Vimeo ruling, which cites both the Copyright Office report and the state appeals court’s decision in UMG. She noted her split with Judge Pauley, but pointed out that he ruled before the Copyright Office had weighed in.

You only have to look at Pauley’s opinion to see why Abrams’ ruling, in combination with the state-court decision and the Copyright Office report, are a nightmare for Internet service providers: They’re now potentially on the hook for common-law copyright violations when users upload files containing pre-1972 songs, even if they have monitoring and file-removal policies that would otherwise protect them. As the law currently stands, oldies are definitely not goodies for Internet service providers.

Vimeo counsel Robert Raskopf of Quinn Emanuel Urquhart & Sullivan declined to comment. Recording company lawyer Russell Frackman of Mitchell Silberberg & Knupp did not return my call.

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