Recent Ruling Extending DMCA Safe Harbor Protections to Pre-1972 Sound Recordings

The United States Court of Appeals for the Second Circuit recently handed down a critical copyright decision for online service providers such as defendant, Vimeo LLC, that operate websites on which members can post videos of their own creation, which are then accessible to the public at large.  That ruling extends a safe harbor protection of the Digital Millennium Copyright Act of 1998 (“DMCA”) to pre-1972 sound recordings posted on sites of qualifying providers, despite the fact that such recordings are protected only under state common law, not federal law.

The DMCA was designed to “clarif[y] the liability faced by service providers who transmit potentially infringing material over their networks,” S. Rep. No. 105-190, at 2 (1998), and to “ensure[] that the efficiency of the Internet will continue to improve and that the variety and quality of services on the Internet will expand.”  Id.  The Senate Report expressed the view that “without clarification of their liability, service providers may hesitate to make the necessary investment in the expansion of the speed and capacity of the Internet.”  Id. at 8.  Thus, the DMCA established safe harbors, including section 512(c), which gives qualifying Internet service providers like Vimeo protection from liability for copyright infringement when they are unaware that users of their sites have uploaded infringing materials.  17 U.S.C. § 512(c).

Section 512(c) establishes a notice-and-takedown regime which requires a service provider, to “expeditiously . . . remove . . . material that is claimed to be infringing,” or disable access to it, whenever the service provider:  1) Receives a notice of infringing material on the service provider’s site; or 2) otherwise becomes aware of the infringement or of circumstances making the infringement apparent.  § 512(c)(1)(C), (A)(iii).   The safe harbor immunizes qualifying providers from liability for copyright infringements posted by users on the providers’ websites if the service providers are unaware of the infringements and relieves them of any obligation to monitor the postings of users to detect infringements.  But, service providers who fail to expeditiously remove infringing material they become aware of lose the safe harbor protection.

Plaintiffs, record companies and music catalogs that own copyrights in certain sound recordings alleged that Vimeo was liable for copyright infringement, identifying 199 videos posted to Vimeo’s site containing allegedly infringing pre-1972 musical recordings.  The Second Circuit rejected the district court’s view—largely accepting without discussion the position of a 2011 U.S. Patent and Trademark Office report—that the section 512(c) safe harbor only protects qualifying Internet service providers from liability of copyright infringement under the federal copyright statute, which does not apply to pre-1972 sound recordings.

The majority decision found that section 512(c)’s use of the phrase “infringement of copyright,” naturally includes infringement of state copyright laws, and is not limited (as in other places in the act) to infringement “under this title.”  Further, it found this reading furthers Congress’ intent in section 512(c) to strike a compromise and “make economically feasible the provision of valuable Internet services while expanding protections of the interests of copyright owners through the new notice-and-takedown provision.”  Excluding pre-1972 sound recordings would effectively “defeat the very purpose Congress sought to achieve in passing the statute” by compelling providers to incur the heavy costs of monitoring for pre-1972 recordings.

Considering that “some of the most popular recorded music of all time was recorded before 1972, including the work of The Beatles, The Supremes, Elvis Presley, Aretha Franklin, Barbara Streisand and Marvin Gaye,” the Court’s decision has serious consequences for service providers who may have faced “potentially crushing liabilities under state copyright laws” for such recordings.

A copy of the Second Circuit’s decision in Capitol Records, LLC et al. v. Vimeo, LLC, No. 14-1048 (2d Cir. 2016) can be found here.


RPL Paralegal Annabel Mireles and 2018 J.D. Candidate at New York Law School prepared this article under the supervision of RPL Partner Larry Brocchini who regularly counsels clients in copyright and intellectual property matters.

This article is intended only as a general discussion of these issues. It is not considered to be legal advice or relied upon. Larry Brocchini would be pleased to consider providing additional details or advice about specific situations.