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Panel Reverses Online Music Site's Safe Harbor for Pre-1972 Songs
New York Law Journal
A law protecting online music services from federal copyright suits over infringing material uploaded by their users does not apply to New York state copyright claims originating before 1972, a state appellate panel ruled yesterday, handing a victory to Universal Music Group in a copyright dispute with music streaming site Grooveshark.
Writing for a unanimous panel of the Appellate Division, First Department, Justice Angela Mazzarelli (See Profile) held in Universal Music Group v. Escape Media Group, 100152/10, that a safe harbor provision in the Digital Millennium Copyright Act, or DMCA, does not protect pre-1972 recordings.
The opinion not only overturned Kapnick, but went against the precedent set by the New York Southern District's 2011 decision in Capitol Records v. MP3tunes, 821 F Supp 2d 627, which also holds that pre-1972 recordings fall under the safe harbor provision.
The DMCA's safe harbor provision says that the provider of an online music service, like Grooveshark, cannot be held liable for copyright infringement by its users, as long as it takes down any infringing material if asked. Grooveshark allows users to upload songs and to listen to songs uploaded by others while connected to the site.
Universal Music Group sued Escape Media, the owner of Grooveshark, for copyright infringement in 2010. It claims that the DMCA's safe harbor provision applies only to songs protected by federal copyright law.
Federal copyright protection was only extended to music recordings in February 1972. Recordings from before that date are subject only to state law, not federal law, copyright claims. UMG argued that the DMCA's safe harbor provision does not apply to those recordings, and moved to strike Escape's affirmative defense that the pre-1972 recordings are protected by the Digital Millennium Copyright Act's safe harbor provision.
Kapnick denied that motion, finding that UMG's interpretation of the law went against the apparent intent of Congress to relieve online music services of the responsibility to determine whether each individual file uploaded by a user violated a copyright.
Mazzarelli, however, wrote that the interpretation adopted by Kapnick violated §301(c) of the federal Copyright Act, which provides that nothing in the Copyright Act shall annul any state copyright protections.
"Initially, it is clear to us that the DMCA, if interpreted in the manner favored by defendant, would directly violate section 301(c) of the Copyright Act," Mazzarelli wrote. "Had the 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."
Mazzarelli said there was no reason to think that Congress had not intended this result.
"Congress explicitly, and very clearly, separated the universe of sound recordings into two categories, one for works 'fixed' after February 15, 1972, to which it granted federal copyright protection, and one for those fixed before that date, to which it did not," she wrote. "Defendant has pointed to nothing in the Copyright Act or its legislative history which prevents us from concluding that Congress meant to apply the DMCA to the former category, but not the latter."
Mazzarelli further noted that the DMCA's definition of a "copyright infringer" refers explicitly to the federal Copyright Act, not to state copyright claims.
"Had Congress intended to extend the DMCA's reach to holders of common-law rights it would have not have provided so narrow a definition," she wrote.
If Congress actually intended to include all recordings in the safe harbor provision, she wrote, "it would be far more appropriate for Congress, if necessary, to amend the DMCA to clarify its intent, than for this Court to do so by fiat."
Andrew Bart of Jenner & Block, who represents UMG, declined to comment.
John Rosenberg of Rosenberg & Giger, represents Escape.
"The court's decision, if it stands, will significantly undermine the safe harbor protections of the Digital Millennium Copyright Act and may severely disrupt the operations of all Internet service providers who, like Grooveshark, permit access to user-generated music content," he said in an emailed statement. "As a result, Grooveshark intends to appeal the court's decision and to seek legislative action on this critical issue, not only for its own interests but for the industry as a whole."
@|Brendan Pierson can be contacted at email@example.com.