Supreme Court Asked If DMCA Safe Harbors Apply to Pre-1972 Sound Recordings

Capitol Records is asking the U.S. Supreme Court to consider a case that could send shockwaves through the music and digital industries.

It all started with the fad of posting “lip dub” videos on Vimeo and similar sites. Users recorded themselves dancing and lip-syncing popular tunes by artists including The Beatles and The Beach Boys and then shared those videos, including the copyrighted recordings, online.

Capitol Records sued Vimeo in 2009, claiming the video sharing site and its users were infringing on its rights in the songs. Vimeo argued that it is protected by the safe harbor provisions in the Digital Millennium Copyright Act, which shields internet service providers from some actions taken by their users.

The heart of this issue now is whether safe harbor protection can used by ISPs to avoid liability for infringements of pre-1972 sound recordings. Those works are protected by state law, so record labels have argued that the immunity afforded under DMCA, which is federal law, doesn’t apply. 

The 2nd Circuit handed ISPs a major win in July, finding that the safe harbor provision includes protection from “infringement of state laws of copyright.” The appeals court denied a rehearing of the issue on Aug. 15. 

Capitol Records is asking the high court to determine if that ruling was an error in a 43-page petition for writ of certiorari filed Wednesday by attorney Carter Phillips. 

In a nutshell, Phillips argues that Section 301(c) of the Copyright Act explicitly protects state law remedies for infringement of pre-1972 sound recordings until February 2067.

“The question presented is whether the Second Circuit erred in holding, contrary to the considered view of the United States Copyright Office and in conflict with New York state appellate courts, that when Congress enacted the Digital Millennium Copyright Act and added section 512 to the Copyright Act, it implicitly limited and preempted the very state-law rights and remedies that section 301(c) says ‘shall not be annulled or limited,'” states the petition.

Capitol argues that the 2nd Circuit decision creates diametrically opposed legal rules in New York state and federal courts, which could lead to “wasteful forum-shopping behavior.”

Perhaps more importantly, Capitol argues that the Supreme Court should take up the issue because it is critically important to the music industry. 

“[T]he Second Circuit’s decision … diminishes the legal protections enjoyed by owners of every sound recording made in the United States prior to February 15, 1972 — including among them works of immense cultural and commercial significance like those of The Temptations and The Supremes, Miles Davis, Ella Fitzgerald, Frank Sinatra, Pablo Casals, and Yehudi Menuhin, to name just a few,” states the petition.

Capitol estimates that theft of music costs the industry $2.7 billion each year and the 2nd Circuit’s decision diminishes owners’ rights “where they are most vulnerable to infringement — in relation to Internet copying, performance, and distribution.” (Read the full petition below.)

Pre-1972 sound recordings have seen a tidal wave of litigation over the years. Most recently, attorneys for Flo & Eddie of The Turtles argued a case before the 9th Circuit over Pandora’s use of oldies tunes. A similar battle with SiriusXM recently settled, but left the door open for appellate courts to create clarity on the issues.

It’s worth noting: President Barack Obama’s former solicitor general Don Verrilli told The Hollywood Reporter in October that there was a good chance the Supreme Court would take on Capitol Records’ case.

Vimeo is represented by a Quinn Emanuel team, which has not yet responded to a request for comment.

Capitol Records is also represented by Russell Frackman and Marc Mayer of Mitchell Silberberg & Knupp, and Kwaku Akowuah, Rebecca Levenson and Constantine Trela of Sidley Austin.