DMCA never been enacted, there would be no question that UMG could sue
defendant in New York state courts to enforce its copyright in the pre-1972
recordings, as soon as it learned that one of the recordings had been posted on
Grooveshark. However, 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.
That is, at best, a limitation on UMG’s rights, and an implicit modification of the
plain language of section 301(c). The word “limit” in 301(c) is unqualified, so
defendant’s argument that the DMCA does not contradict that section because
UMG still retains the right to exploit its copyrights, to license them and to create
derivative works, is without merit. Any material limitation, especially the
elimination of the right to assert a common-law infringement claim, is violative of
section 301(c) of the Copyright Act.^3001The court found no reason to conclude that Congress, in enacting the DMCA,
recognized a limitation on common-law copyrights posed by the DMCA but intended to
implicitly dilute Section 301(c) nonetheless. To the contrary, the court pointed out that
the DMCA expressly identifies the rights conferred by the Copyright Act in stating who a
“copyright infringer” is for purposes of the DMCA. The court reasoned that had
Congress intended to extend the DMCA’s reach to holders of common-law rights it
would have not provided so narrow a definition.^3002
The federal district court in Capitol Records, LLC v. Vimeo, LLC^3003 reached the
same conclusion for similar reasons, citing the New York state court’s decision in UMG
Recordings v. Escape Media and a December 2011 report from the Copyright Office that
concluded the DMCA safe harbors do not apply to pre-1972 recordings.^3004 The court
shared the view articulated in the Copyright Office report that “it for Congress, not the
courts, to extend the Copyright Act to pre-1972 sound recordings, both with respect to the
rights granted under the Act and the limitations on those rights (such as section 512) set
forth in the Act.”^3005 However, the court certified the issue for interlocutory appeal to the
Second Circuit.^3006
The federal immunity afforded web sites under the Communications Decency Act (CDA)
may apply to claims against web site operators under state copyright protection in pre-1972
(^3001) Id. at 12-13. The court’s rationale seems to ignore the fact that UMG could have sued the uploader of its
copyrighted works.
(^3002) Id. at 13-14.
(^3003) 972 F. Supp. 2d 500 (S.D.N.Y. 2013).
(^3004) Federal Copyright Protection for Pre-1972 Sound Recordings (Dec. 2011), available at
http://www.copyright.gov/docs/sound/pre-72-report.pdf.
(^3005) Vimeo, 972 F. Supp. 2d at 536-37 (quoting the Copyright Office report at 132).
(^3006) Capitol Records, LLC v. Vimeo, LLC, 972 F. Supp. 2d 537, 556 (S.D.N.Y. 2013).