New York Court Rejects DMCA Defense for Music Recorded Before 1972

On April 23, 2013, the New York State Supreme Court of Appeals ruled that the safe harbor provisions of the Digital Millennium Copyright Act (DMCA) do not cover sound recordings made prior to 1972. The decision conflicts with an earlier federal decision and exposes Internet companies that host or transmit music recorded before 1972 to copyright infringement liability.

UMG Recordings, Inc., v. Escape Media Group, Inc., began in New York state court when Universal Music Group (UMG) sued Escape Media Group (EMG), owner of the Grooveshark music hosting website, for infringing UMG copyrights in pre-1972 music. The Grooveshark website allows users to upload and stream music, including UMG copyrighted music from before 1972 without a license. EMG successfully argued in trial court that Grooveshark’s hosting services were protected by Section 512 of the DMCA, which exempts under certain conditions qualifying on-line service providers from claims of copyright infringement against them resulting from the conduct of their customers. The New York State Supreme Court of Appeals, however, reversed and held that sound recordings made before 1972 are not covered by the DMCA safe harbors. The U.S. Copyright Act was amended in 1971 to include federal protection for sound recordings fixed on February 15, 1972, but also stated that any state statutory or common law rights in sound recordings fixed before this date could not be limited by the Act until 2067. Thus, UMG argued that the DMCA safe harbors can not affect its common law rights in music recorded before February 15, 1972. The Appeals Court’s decision holding that pre-1972 recorded music is not covered by the DMCA was likely made easy by a late 2011 letter sent from the U.S. Copyright Office to Congress making this exact point. In the letter, the Copyright Office recommended that Congress change this and apply federal protection to pre-1972 recorded music as well.

With this ruling, Internet companies hosting music recorded before 1972 could be subject to claims for actual damages and injunctions under common law. The conflicting decisions by courts on this very issue, namely the 2011 U.S. District Court case Capitol Records, Inc. v. MP3tunes, LLC, will likely encourage further litigation. Moreover, it is possible that Congress will amend the DMCA to cover pre-1972 sound recordings, as it has been urged by some to do so. Until then, however, Internet companies hosting pre-1972 music, especially those with a presence in New York, should examine what content is hosted, and whether it would be prudent to obtain licenses or take more proactive measures to prevent infringement claims.