BESEK AND KEITER, THE PECULIAR CASE OF PRE-1972 SOUND RECORDINGS, 41 COLUM. J.L. & ARTS 559 (2018) Capitol Records v. Vimeo: The Peculiar Case of Pre-1972 Sound Recordings and Federal Copyright Law June M. Besek and Owen W. Keiter* INTRODUCTION In Capitol Records, L.L.C. v. Vimeo, L.L.C., the U.S. Court of Appeals for the Second Circuit held that the “safe harbor” provisions of Section 512 of the federal Copyright Act covered state law claims against an online service provider for infringement of pre-1972 sound recordings.1 The evidentiary basis for this conclusion was slender. At the heart of the decision was the court’s surmise that Congress must have intended to cover state law “copyright,” because a contrary interpretation would undermine the policy objectives of the Digital Millennium Copyright Act (DMCA). In reaching its decision, the court apparently misread the Copyright Act and misunderstood both the nature of state law protection for pre- 1972 sound recordings and the trade-offs that underlay the DMCA. We submit that this holding of Vimeo should not be followed by courts in other circuits, however sympathetic its policy underpinnings may be.2 It is doubtful that Congress considered state law “copyright” claims in passing the DMCA, or that it meant to include them under § 512. As a policy matter, it probably should have done so. But had it done so, Congress almost certainly would have said so explicitly, and would have altered other provisions of the DMCA to achieve a fairer result for owners of rights in pre-1972 sound recordings than the Second Circuit did. Congress could, for example, have protected pre-1972 sound recordings under § 1201 et seq., or otherwise provided those recordings with greater protection under the Copyright Act.3 The court’s focus on only one policy objective of the DMCA led it to interpret the Copyright Act in an implausible manner that benefits online * June M. Besek is the Executive Director of the Kernochan Center for Law, Media and the Arts and a Lecturer in Law at Columbia Law School. Owen W. Keiter is a member of the Columbia Law School Class of 2018. 1. 826 F.3d 78 (2d Cir. 2016). 2. Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1010 (2017) (the process of interpreting the Copyright Act “is not a free-ranging search for the best copyright policy, but rather ‘depends solely on statutory interpretation.’” (quoting Mazer v. Stein, 347 U.S. 201, 214 (1954)). 3. 17 U.S.C. §1201 et seq. protects against bypassing or decrypting technological means of protection for copyrighted works. This provision, which currently applies only to works protected by federal copyright, was passed as part of the DMCA. © 2018 Besek and Keiter. This is an open access article distributed under the terms of the Creative Commons Attribution License, which permits unrestricted use, distribution, and reproduction, provided the original author and source are credited. 559 BESEK AND KEITER, THE PECULIAR CASE OF PRE-1972 SOUND RECORDINGS, 41 COLUM. J.L. & ARTS 559 (2018) 560 COLUMBIA JOURNAL OF LAW & THE ARTS [41:4 service providers (OSPs), at the expense of owners of pre-1972 sound recordings, and the unique position of those recordings under copyright law. The central issues in this case that concern pre-1972 sound recordings are more appropriately under Congressional purview, as the Second Circuit should have recognized. And indeed, Congress should act to resolve these issues, particularly now, in view of the conflicting treatment of state law claims between Vimeo (concerning the safe harbor in § 512 of the Copyright Act)4 and the Ninth Circuit’s sweeping conclusion in Perfect 10, Inc. v. CCBill, L.L.C.5 that state law intellectual property claims are barred by § 230 of the Communications Decency Act (CDA).6 Accordingly, we recommend legislation to address this issue and to resolve other problems and inconsistencies that have arisen due to the peculiar situation of pre- 1972 sound recordings and federal copyright law, as discussed below. In Part I, we discuss the legal status of pre-1972 sound recordings as necessary background to evaluating the Second Circuit’s decision in Vimeo. Part II discusses that decision in greater detail, and Part III explains the flaws in the court’s rationale. In Part IV, we address the Second and Ninth Circuits’ contradictory views concerning the treatment of state law claims against OSPs under § 512 of the Copyright Act and § 230 of the CDA. In Part V, we explain that it is up to Congress to change the role of pre-1972 sound recordings in the federal copyright scheme, and argue that the time is ripe for Congress to exercise that power. We conclude in Part VI. I. THE LEGAL STATUS OF PRE-1972 SOUND RECORDINGS Sound recordings are “works that result from the fixation of a series of musical, spoken, or other sounds.”7 Sound recordings were first protected by federal copyright law effective February 15, 1972, but that law operated only prospectively, to protect sound recordings created on or after that date.8 Sound recordings created prior to February 15, 1972 (“pre-1972 sound recordings”) are not and never have been protected by federal copyright law.9 Owners of rights in pre-1972 sound recordings continue to rely on state law protections in order to protect their rights in such works, as they did prior to the federalization of sound recording protection.10 Many pre-1972 sound recordings, such as those by Frank 4. 17 U.S.C. § 512. 5. 488 F.3d 1102 (9th Cir. 2007). 6. 47 U.S.C. § 230. 7. 17 U.S.C. § 101. 8. The Sound Recording Amendment, Pub. L. No. 92-140, § 3, 85 Stat. 391 (1971), passed on Oct. 15, 1971, granted copyright protection to sound recordings fixed on or after its effective date, which was four months later, on February 15, 1972. Even though the effective date of federal protection was February 15, 1972, for ease of reference we refer to sound recordings created prior to that date as “pre- 1972 sound recordings” and those created on or after February 15, 1972 as “post-1972 sound recordings.” 9. Id.; see 17 U.S.C. § 301(c). 10. See UNITED STATES COPYRIGHT OFFICE, FEDERAL COPYRIGHT PROTECTION FOR PRE-1972 SOUND RECORDINGS 5 (2011), https://perma.cc/W4U5-4FN8 [hereinafter “Copyright Office Report”]; BESEK AND KEITER, THE PECULIAR CASE OF PRE-1972 SOUND RECORDINGS, 41 COLUM. J.L. & ARTS 559 (2018) 2018] THE PECULIAR CASE OF PRE-1972 SOUND RECORDINGS 561 Sinatra, Elvis Presley, Ella Fitzgerald, the Beatles, and the various Motown performers, retain significant commercial value. When Congress passed the Copyright Act of 1976, it made unmistakably clear that sound recordings created prior to February 15, 1972 would remain protected exclusively by state law until they passed into the public domain. Section 301(c) of the Copyright Act provides: With respect to sound recordings fixed before February 15, 1972, any rights or remedies under the common law or statutes of any State shall not be annulled or limited by this title until February 15, 2067 . Notwithstanding the provisions of Section 303, no sound recording fixed before February 15, 1972, shall be subject to copyright under this title before, on, or after February 15, 2067.11 Owners of copyrights in pre-1972 sound recordings must turn to state laws to protect their rights. State laws, however, do not provide a uniform, integrated form of protection. Instead, they provide a patchwork of laws that protect sound recordings on different terms in different states. Many state laws that protect pre- 1972 commercial sound recordings are not “copyright” laws but instead sound in unfair competition, misappropriation, or other torts.12 Capitol Records, Inc. v. Spies is illustrative. There, an Illinois appellate court reversed the trial court’s denial of a preliminary injunction against the distributor of unauthorized copies of plaintiff’s sound recordings. It held that Spies could be liable for unfair competition, even though Spies wasn’t passing off the recordings as originating with him.13 According to the court, Spies appropriated the plaintiff’s product by copying and selling its recordings. It was competing with Capitol by see generally Michael Erlinger, Jr., An Analog Solution in A Digital World: Providing Federal Copyright Protection for Pre-1972 Sound Recordings, 16 UCLA ENT. L. REV. 45, 51–56 (2009). 11. 17 U.S.C. § 301(c). As passed, the law provided February 15, 2047 as the end date for protection of pre-1972 sound recordings, but twenty years was added to that date under the Copyright Term Extension Act, Pub. L. No. 105-298, 112 Stat. 2827 (1998). Not all pre-1972 recordings will be protected in all states until 2067; it depends on the relevant state law. For example, some states have chosen to end protection earlier. E.g., Cal. Civ. Code § 980 (a)(2). 12. Eva E. Subotnik & June M. Besek, Constitutional Obstacles? Reconsidering Copyright Protection for Pre-1972 Sound Recordings, 37 COLUM. J. L. & ARTS 327, 337 (2014) (“States may treat unauthorized reproduction and distribution of pre-1972 sound recordings as unfair competition or misappropriation, a violation of ‘common law copyright,’ or as another type of civil wrong.”); Program on Information Justice and Intellectual Property, Washington College of Law, American University (under the supervision of Peter Jaszi with the assistance of Nick Lewis), PROTECTION FOR PRE-1972 SOUND RECORDINGS UNDER STATE LAW AND ITS IMPACT ON USE BY NONPROFIT INSTITUTIONS: A 10- STATE ANALYSIS 8 (CLIR and Library of Congress 2009) [hereinafter “Jaszi Study”] (“States may protect sound recordings by criminal statutes (e.g., unauthorized distribution laws), by civil statutes, or through common law theories such as common law copyright and the doctrine of unfair competition (along with its relative, the doctrine of misappropriation” (citation omitted)).