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NY Appellate Court Holds DMCA Safe Harbor Inapplicable to Pre-1972 Sound Recordings
Practical Law Legal Update 9-526-4147 (Approx. 3 pages)
NY Appellate Court Holds DMCA Safe Harbor Inapplicable to Pre-1972 Sound Recordings
by PLC Intellectual Property & Technology
| Published on 25 Apr 2013 • New York |
In UMG Recordings, Inc. v. Escape Media Group, Inc., the NY Supreme Court, Appellate Division reversed a NY Supreme Court, New York County decision denying UMG's motion to dismiss Escape Media Group's affirmative defense that the DMCA's safe harbor provisions shielded it from infringement claims concerning pre-February 15, 1972 sound recordings. The NY Supreme Court, Appellate Division held that the DMCA does not cover these sound recordings.
The NY Supreme Court, Appellate Division, First Department, in its April 23, 2013 opinion in UMG Recordings, Inc. v. Escape Media Group, Inc., held that the safe harbor provisions of the Digital Millennium Copyright Act (DMCA) do not apply to pre-1972 sound recordings. On that basis, the First Department reversed the Supreme Court, New York County's denial of UMG's motion to dismiss Escape's affirmative defense under the DMCA safe harbor.
UMG sued Escape Media in the Supreme Court, New York County for copyright infringement based on Escape Media's allowing users to upload unlicensed sound recordings to its music streaming website, including sound recordings made before February 15, 1972 (pre-1972 recordings). That date is important because the Copyright Act:
- Only extends federal copyright protection to sound recordings made on or after that date.
- Expressly excludes state statutory and common law copyright protection of pre-1972 recordings from its preemption provisions.
Escape Media asserted, among other defenses, that the DMCA safe harbor shielded it from copyright infringement liability for the pre-1972 recordings. The court agreed and denied UMG's motion to dismiss the defense. UMG appealed.
The Appellate Division reversed the lower court's ruling, holding that the DMCA safe harbor does not apply to pre-1972 recordings. The court found that:
- Interpreting the DMCA to apply to pre-1972 recordings would violate section 301(c) of the Copyright Act's mandate that state statute and common law protections of these recordings "shall not be annulled or limited" by the Copyright Act's provisions.
- There was no reason to conclude that Congress intended the DMCA to dilute section 301(c), where both provisions can reasonably coexist.
- In specifying who a copyright infringer is for its purposes, the DMCA refers to rights conferred under the Copyright Act, which do not include rights in pre-1972 recordings.
- Because Congress enacted the DMCA and amended section 301(c) in the same session, the absence of language reconciling these sections creates a strong presumption that Congress did not intend for the DMCA to modify 301(c).
This decision is directly contrary to the US District Court for the Southern District of New York's decision on this issue in Capitol Records, Inc. v. MP3Tunes, LLC, 821 F. Supp.2d 627 (S.D.N.Y 2011). Escape Media reportedly plans to appeal the decision. In the meantime, the decision has significant implications for service providers that allow users to upload music, because to avoid liability or protracted litigation, they may need to screen uploads to determine whether they are pre-1972 recordings.
Update: On October 8, 2013, the NY Supreme Court, Appellate Division denied Escape Media's motion for leave to appeal the April 23, 2013 ruling to the NY Court of Appeals.
Court document: