by Ari Lipsitz*

How should courts address the contradiction between the preemption rules for pre-1972 recordings in the Copyright Act and the safe harbors in the Digital Millennium Copyright Act? In this Contribution, Ari Lipsitz (’18) analyzes the statutory conflict between these provisions and examines how courts have dealt with issues under these statutes. Ultimately, this Contribution discusses the potential effects of the Second Circuit’s decision in Capitol Records v. Vimeo and proposes legislative reform and judicial interpretations to protect internet policy and copyright law.

When the exceptions and carveouts of the Copyright Act conflict with each other, the effect can be akin to an orchestra and a zydeco band playing on opposite sides of the same room — with litigants in the middle, trying to process the unpleasantness while they tiptoe toward the exit. Nowhere is the statutory headache more prominent than in the cacophonous interaction of two byzantine frameworks: the copyrightability of sound recordings and the liability rules for online infringement. The noise threatens to empty the room of creators and audiences and open the door to forces that dwell in the discord.

The Copyright Act allows for certain online service providers to claim a “safe harbor” for hosting potentially infringing material at the direction of their users. The safe harbor grants legal predictability to the variety and scale of online services that rely on copyrighted material and seeks to avoid dissuading investment in either innovative technology or creative works. The issue is whether this safe harbor, enacted as 17 U.S.C. § 512(c), applies against material that federal copyright law expressly leaves to the states. This is usually not a problem; the preemption provisions of the Copyright Act of 1976 nearly cover the field—but only nearly. The Act has never protected any sound recording created before 1972, and so a question persists as to whether those recordings are similarly beyond the refuge of the safe harbor.

In Capitol Records v. Vimeo, the Second Circuit sought to reconcile this tension between the Copyright Act’s preemption rules for pre-1972 sound recordings and the “safe harbors” for certain internet actors hosting potentially infringing material.2 Vimeo held that, notwithstanding the exclusion of pre-1972 sound recordings from federal copyright, the safe harbor framework established a “tiny exception” to the rules.3 This way, service providers facing liability for user-directed infringement of pre-1972 sound recordings can raise the applicable safe harbor—even as the owners of those recordings cannot not claim rights under federal copyright law. The court recognized that disallowing the safe harbor for one sliver of protected expression risks altering the economic compromise that Congress struck. This result is a sensible policy outcome. But nonetheless, the conclusion is wrong. The Copyright Act does not favor the Second Circuit’s “tiny exception” to the preemption rule: the text of the safe harbor can be fairly read as ambiguous, while the rights-based structure of the Act cuts against an exception.

This Contribution proceeds in three parts. It begins by discussing the statutory conflict between the preemption rules for pre-1972 sound recordings and the Digital Millennium Copyright Act (“DMCA”) safe harbor. It then reviews various judicial approaches to the problem, focusing on the Second Circuit’s decision in Vimeo. Finally, it seeks to model the effect of the issue on online investment and litigation incentives. If legislative reform is always slightly to the side of the table—the next major revision to the Copyright Act is unlikely to come along anytime soon—courts must filter through the dissonance between sound recordings and online liability. Choosing which regime must bow to the other has substantial consequences for the next steps of creators, technologists and consumers.

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Part One. The Statutory Conflict.

There is an unavoidable tension between the following attributes of American copyright law:

(1) Federal copyright does not protect sound recordings fixed before February 15, 1972, and cannot limit any state rights or remedies in those recordings.4

(2) Federal copyright establishes a set of “safe harbors” for certain online actors. The most important safe harbor appears in section 512(c) of the Act and limits the liability of complying service providers for “infringement of copyright” at the direction of their users.5

Note the dissonance: if federal copyright is entirely inapplicable to any protection over pre-1972 sound recordings, then it is a reasonable inference that the section 512(c) safe harbor, which is incorporated within the federal copyright regime, also excludes those works. This is what a coalition of record labels attempted to argue against a video platform in Capitol Records v. Vimeo.6 But then, there might be good reasons to prefer a uniform system of internet rules. Carving out a particular sliver of online media from a blanket immunity provision would cut against the DMCA’s balance of roles—service providers could claim immunity for most content but would have to work particularly hard to make sure pre-1972 sound recordings don’t appear on their services. Those special monitoring effects are not contemplated by the statute and may even be foreclosed by it.7 A special carveout could break the DMCA. This is what the video platform in Vimeo argued back, and what the Second Circuit held to be the correct reading.8

If you believe in a comprehensively rational copyright system (and my sympathies if you do), neither of these two positions is too compelling. But beyond copyright coherence for the sake of copyright coherence, the dispute poses material problems for copyright owners and internet companies. Making it more difficult, both doctrinal frameworks — copyright preemption and online liability — are convoluted enough individually. Before wading into the collision, it will help to detail each framework in turn.

* * * * * *

Sound recordings are a relatively recent addition to federal copyright law. As a result of the heated rivalry between the recording industry and the radio industry, federal law failed to regulate sound recordings until 1972. Over the decades, a patchwork of state law protection arose and filled the space.9 When Congress granted protection to sound recordings for the first time in the windup to the comprehensive Copyright Act of 1976, it did not do so retroactively. It accordingly left in place state law protection “sound recordings fixed before February 15, 1972.”10 Under section 301(c), state copyright in those recordings may endure until 2067, after which all pre-1972 sound recordings fall into the public domain at once.11

This is a special preemption rule and should be understood against the Act’s general preemption provision, which forecloses any state protection of subject matter within the reach of the Act roughly equivalent to the text’s “exclusive rights” — retroactive or otherwise.12 It is the only preemption rule conditioned on a time threshold.

The time bar for federal protection of sound recordings means that the exclusive source of copyright protection for pre-1972 sound recordings (and only pre-1972 sound recordings) in the United States remains state law copyright.13 Section 301(c) engineers a distinction that the Copyright Office, perhaps overly optimistically, called the “single inconsistency in what was intended to be a seamless national system of copyright protection.”14 This distinction may not make complete sense, nor does it have a satisfying historical basis; the Copyright Office admits the legislative rationale for distinguishing pre-1972 sound recordings is “unclear.”15

Whatever the pedigree of section 301(c), its basic operation proceeds in three steps. First, the provision states that a litigant’s “rights and remedies” under state law in a pre-1972 sound recording shall not be “limited or annulled” by federal law.16 Second, the provision states that no pre-1972 sound recording “shall be subject to copyright under this title.”17 Finally, the provision imposes an expiration date: federal preemption eliminates all state law protection in 2067, but because pre-1972 sound recordings shall not be subject to copyright “under this title before, on, or after February 15, 2067,” federal preemption forces such recordings into the public domain.18

Accordingly, a litigant with a pre-1972 sound recording cannot claim any of the exclusive rights enumerated in the Act and must seek relief under state law.19 Nor should the Act, as a general rule, be read to affect the governance of those state copyrights. Yet the Second Circuit’s Vimeo decision upended this symmetry, interpreting a provision of the Act to silently function as a “partial repeal” of section 301(c).20 To understand why, we need to jump from the 1970s to the 1990s and discuss the safe harbor framework of the Digital Millennium Copyright Act.

* * * * *

The Digital Millennium Copyright Act of 1998 (DMCA) sets out one of the most important copyright tools for online actors: the section 512 safe harbors.21 Section 512 enumerates a set of four safe harbors for online service providers, the third of which, enacted in section 512(c) of the Copyright Act, covers infringement claims that arise “by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider.”22 As this applies to hosted content (including websites and social media), section 512(c) tends to be the most commercially relevant and heavily litigated.23 As long as qualifying service providers comply with certain requirements—including promptly removing infringing content upon notification and reasonably implementing a repeat infringement policy24—they are not liable for any “infringement of copyright” uploaded by their users without their knowledge.25

The safe harbors were enacted as a component of the balanced framework of the DMCA. Congress understood that the expressive digital mechanics of the internet—even in 1997, an economically and strategically vital backbone of networked communications—necessarily allow the technological possibility of massive piracy. As Congress stated, due to “the ease with which digital works can be copied and distributed worldwide virtually instantaneously, copyright owners will hesitate to make their works readily available on the Internet without reasonable assurance that they will be protected against massive piracy.”26

But Congress also understood that traditional liability rules could hinder growth of online services. Because of that same possibility of massive piracy, online providers storing user-uploaded material risked facing secondary liability for any potential user-initiated violation: given the volume of uploaded content on the internet, and the imposing costs and inherent uncertainty of copyright litigation,27 such exposure would create substantial chilling effects in online media. Congress noted 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.”28

Accordingly, two stated purposes accompanied the enactment of section 512. First, the safe harbors provide “strong incentives” for service providers and copyright owners to cooperate in detecting online copyright infringement; and second, the safe harbors are to provide “greater certainty” to service providers for potential infringement liability that may occur during their activities.29 The statute strikes a balance.

While the impact of section 512(c) and its attendant notice-and-takedown system on creators and content owners is disputed,30 the impact on technology companies in the two decades since implementation has been seen as largely beneficial.31 Internet companies routinely invoke the protections of the safe harbors, and commentators find section 512 a critical backbone of the legal framework for online content.32 The safe harbors, as commentators observe, allow “online service providers to create the platforms and services that users rely on to access information and creative content, communicate with one another, and create and share their own original works.”33

It should be clear enough that the section 512(c) safe harbor optimizes behavioral predictability when it applies to all forms of copyrighted media. This way, copyright owners and service providers can predictably utilize the safe harbor framework whether the work at issue is a motion picture, a musical work, a literary work, or anything else protected by the Copyright Act.34 This is consistent with the Act’s backbone preference toward a uniform copyright regime applicable regardless of subject matter.35

Still, it’s not a very strong backbone. While the DMCA on its terms treats all subject matter alike, the rest of the Copyright Act does not. Pre-1972 sound recordings are not federally copyrightable subject matter.36 Yet the unique imperatives of the DMCA and its safe harbor rules established a deviation from this baseline exclusion. The question is which carveout controls the other.

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Part Two. Vimeo and the Tiny Exception.

Courts and commentators are split as to whether the section 512(c) safe harbor applies against state law claims for pre-1972 sound recordings. The position of the Copyright Office is that pre-1972 sound recordings are not covered by the safe harbor—though, it suggested, “there is no policy justification to exclude older sound recordings from section 512.”37 Meanwhile, the Second Circuit agreed with the Copyright Office’s policy conclusion but found the Act as currently written does permit a uniform safe harbor.38

A handful of courts have reviewed the issue — nearly all of them either state courts in New York or federal courts in the Second Circuit. In the 2011 case Capitol Records, Inc. v. MP3tunes, LLC, a District Court held that section 512(c) reaches state-law (that is, pre-1972) sound recording claims.39 But a subsequent District Court in Capitol Records, LLC v. Vimeo, LLC rejected the MP3tunes holding, instead accepting the conclusions of the Copyright Office.40 In Vimeo, a group of labels sued a video platform for failing to remove videos allegedly containing recordings of copyrighted sound recordings. The parties cross-moved for partial summary judgment on whether Vimeo was eligible for the safe harbor. The District Court carved out the pre-1972 sound recording claims and, holding the safe harbor inapplicable, granted partial summary judgment to the labels.41

On appeal, the Second Circuit vacated the grant of partial summary judgment.42 Judge Leval, writing for the panel, accepted the Copyright Office’s policy conclusion but rejected its legal analysis, concluding that under the Act, the safe harbor does apply against pre-1972 sound recordings.43 To date, no other federal court has broached the topic.

Federalism creates uncertainty. A New York appellate court ruling conflicts with the Vimeo holding, adopting the Copyright Office position that the safe harbor excludes pre-1972 sound recordings.44 On the basis of this conflict, the Vimeo labels petitioned the Supreme Court to take the appeal in March 2017; likely owing to the absence of conflicting federal cases on the books, the Court declined.45 The uncertainty remains live.

Even scholars and interest groups are unsure where the law stands. A smattering of commentary has focused on the interactions between pre-1972 sound recordings and the DMCA safe harbors, but the conclusions are tentative and wary.46 The Copyright Office noted that over the course of its study of pre-1972 sound recordings, both of the stakeholders raising the issue —the Recording Industry Association of America and the Electronic Frontier Foundation—agreed that the right answer is uncertain.47

Vimeo, written authoritatively by Judge Leval, should have resolved the issue. But the Second Circuit’s holding will not result in a predictable operation of the Copyright Act. To understand why, we now turn to Vimeo.

* * * * *

Vimeo came down to a question of statutory interpretation: the Copyright Act is not clear as to whether the section 512(c) safe harbor is a special exception to the rule against federal protection of pre-1972 sound recordings (as Vimeo argued), or whether pre-1972 sound recordings are a special exception to the federal limitation on liability for online service providers (as Capitol Records argued).48 The Second Circuit sided with the former reading, finding a “tiny exception” within the statutory framework to the blanket preemption rules.49 But this reading is strained at best.

Section 512(c) provides that qualifying service providers “shall not be liable . . . . for infringement of copyright.”50 The Act nowhere directly defines either “infringement” or “copyright.”51 Assessing that statutory silence, the Second Circuit found that the DMCA safe harbor must not be limited to federal infringement claims—in fact, it extends against all infringement claims, including those asserting state copyrights.52 Logically, the court concluded, “[o]ne who has been found liable for infringement of copyright under state laws has indisputably been found ‘liable for infringement of copyright.’”53 The court buttressed this reading by noting that the safe harbor provision fails to qualify the phrase with “under this title,” which appears in other parts of the Act.54

While sensible in isolation, this reading conflicts with the broader structure of section 512 as well as with that of the Act, which repeatedly and (mostly) consistently establishes protection with reference to a set of specifically enumerated exclusive rights listed in the Act.

First, much of the safe harbor framework itself appears to require federal jurisdiction. Section 512(h), for example, provides for the issuance of federal subpoenas to identify infringers.55 This is only available to a “copyright owner” or its agent, and the Act defines a “copyright owner” as one who holds claim to “any one of the exclusive rights comprised in a copyright.”56 Section 512(j) permits injunctive relief against particular online service providers, but similarly, it is defined in reference to the Copyright Act’s general injunction provision, which requires federal jurisdiction.57 Owners of pre-1972 sound recordings may not seek a DMCA injunction or subpoena against an online service provider, because the Copyright Act’s  jurisdiction does not extend to their recordings.58

Second, the broader structure of the Copyright Act confirms this view, advocated by the Copyright Office and supported by Professor Nimmer. Throughout the Act, the six exclusive rights—of reproduction, preparation of derivative works, distribution, public display, public performance, and public performance of sound recordings by means of a digital audio transmission—form the axle of the Act’s definitions and operations.59 In addition to defining a “copyright owner” in reference to exclusive rights, the Act’s primary violation provision states that “[a]nyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 122 . . . . is an infringer of the copyright.”60 Every other section of the chapter that describes copyright violations and remedies (which includes section 512) is limited to federal copyright.61 This is the position of the Copyright Office, which argued that “infringement of copyright” is limited to “infringements of rights protected under title 17, and does not include infringements of rights protected under common law or statute of any State.”62 It noted that no other sections of the Act qualifying “infringement of copyright” had ever been applied to state claims.63 Similarly, Nimmer argues that:

[I]t would be highly strange for Congress, having explicitly defined at the outset of the chapter ‘an infringer of the copyright’ to be only someone who violated federal copyright interests, and then having used the term ‘infringement’ in umpteen succeeding sections to mean a violation only of federal copyright interests, to then culminate the chapter in 1998 with an unadorned reference to ‘infringement of copyright’ with the intent that it mean state copyright interests.64

The Second Circuit’s logic—every infringer of federal copyright commits “infringement” within the meaning of the section 512(c) safe harbor, but not all infringement protected by the safe harbor is of federal copyrights—makes limited sense and renders the Act’s structure hollow. As a New York state court noted, the DMCA “expressly identifies the rights conferred by the Copyright Act in stating who a ‘copyright infringer’ is for purposes of the DMCA. 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.”65

Thus, while the safe harbor’s bare phrasing (“infringement of copyright”) lends itself to encompassing state claims, its presence in a copyright system of enumerated federal rights suggests state law claims are outside the safe harbor. Although the Second Circuit found its reading “literal and natural,”66 the text is at best ambiguous.

* * * * * *

The legislative history surrounding the passage of section 512 does not resolve the ambiguity. The DMCA does not express any intent to limit the Act’s preemption rules.67 Moreover, in the same term as it passed the DMCA, Congress amended the Act’s preemption provisions, extending the public domain date from 2047 to 2067.68 Litigants have therefore argued that Congress intended the DMCA to exclude pre-1972 sound recordings, as the rest of the Act does. The Second Circuit did not address whether this should impact its interpretation of the safe harbor, but a New York state court found the argument persuasive.69 Scholars have raised the possibility that the enacting Congress may not have thought about online sound recordings at all.70

What convinced the Vimeo court, however, was the pernicious result of excluding only pre-1972 sound recordings from the ambit of the safe harbor. Judge Leval, writing for the court, noted that an exclusion would place an onerous burden on service providers, which “would be compelled either to incur heavy costs of monitoring every posting to be sure it did not contain infringing pre-1972 recordings, or incurring potentially crushing liabilities under state copyright laws.”71 The court noted that the question was not merely academic—pre-1972 sound recordings remain of extraordinary commercial value, and consequently remain subject to litigation.72 The costs of such compliance would, the court determined, either dissuade investment in online infrastructure, or pass the extreme costs to consumers.73 That would defeat the DMCA framework, which was to 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.”74 Thus, the court determined, the safe harbor must apply to all works — whether protected by federal copyright or state copyright.75

The court therefore found that the DMCA “establishes a tiny exception to the general principle” that pre-1972 sound recordings are exempt from federal regulation.76 It vacated the district court’s grant of summary judgment to the record label plaintiffs regarding the availability of the section 512(c) safe harbor applied against liability for infringement of pre-1972 sound recordings.77

Vimeo’s holding conflicts with a 2013 New York state court decision holding that the DMCA’s “safe harbors” do not apply against pre-1972 sound recordings.78 In Escape Media Group, a record label argued that state law claims in pre-1972 sound recordings could not be barred by section 512(c)—allowing a safe harbor defense would effectively “annul” or “limit” common law rights and remedies, which the preemption provision forbids.79

The Appellate Division, interpreting the text, agreed that allowing a defendant to raise section 512(c) against a state law claim would “limit” the available state rights and remedies as set forth in section 301(c).80 Nor, it concluded, did Congress intend the DMCA to “implicitly dilute” section 301(c)—not merely because the provision’s temporal line “explicitly, and very clearly, separated the universe of sound recordings into two categories,” but also because the contemporaneous amendment meant that Congress was in fact “acutely aware” of the potential for qualification, and rejected it.81

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Part Three. Consequences of a “Tiny Exception” in Either Direction.

As the Second Circuit noted, adherence to a strong reading of the preemption provision would mean that service providers could count on the protections of the safe harbor for any copyrighted material, except pre-1972 sound recordings. Given the continuing economic and cultural vitality of pre-1972 sound recordings, service providers can expect some user-directed infringement of those works.82

But if the DMCA does not protect against actions asserting pre-1972 sound recordings, then service providers could not claim the blanket safe harbor that facilitates their business model. They would have to monitor their systems for a particular sliver of protected expression.

This special attention is not merely inconvenient. It inverts the allocation of responsibilities expressly contemplated by the text of the safe harbor. Service providers who qualify for the safe harbor are not required to affirmatively monitor their system for infringing material.83 Instead, Congress placed the monitoring responsibility on the copyright owner: if infringing material is identified, the owner must send a takedown notice to the service provider.84 Copyright owners routinely protest the inequities of the monitoring costs, likening it to a million-dollar game of “Whack-a-Mole.”85 While the wisdom of an alternative system is beyond the scope of this Contribution, it is clear that the copyright and online industries have consistently interpreted the DMCA to require action initiated by the owner, not the service provider.

Shifting monitoring costs for only one sliver of copyrighted material may be particularly undesirable for a service provider. Altering liability rules may require special filtering mechanisms for only pre-1972 sound recordings. This may or may not be technologically feasible—and the success probably depends on the integrity of attributed copyright data for digital versions of old sound recordings, which requires a level of coordination from the music industry that has not yet manifested.

Even if feasible, the costs of such a targeted monitoring program would privilege service providers with sufficient scale to invest in such a program, at the expense of startups.86 As an example: YouTube preserved its position against copyright holders by investing in Content ID, which automatically identifies copyrighted content posted to its system, and permits copyright holders to remove or monetize the use.87 Content ID forms an essential part of YouTube’s architecture, but a proprietary $60 million tool is difficult to replicate.88 YouTube stands alone with respect to scale: while independent video platform Vimeo at the time of the Capitol Records litigation hosted more than 12.3 million registered users, YouTube claimed over 800 million unique users.89 This disparity reflects the particular importance of the safe harbor provisions to small-to-mid-tier service providers: an amount of user-uploaded content outstripping manual oversight, yet also inadequate resources to invest in automatic controls.

For small service providers facing an inundation of potentially-infringing, user-uploaded content, winnowing out pre-1972 content for special inspection is unrealistic. By contrast, a blanket immunity provision such as the section 512(c) safe harbor is conducive toward continued growth and innovation of these small providers. Yet whether the balance effectuated by the Vimeo holding is a desirable implementation of the Act’s statutory goals depends on the holding’s effect on copyright owners.

* * * * * *

In their petition to the Supreme Court for certiorari, the Vimeo plaintiffs argued that the Second Circuit’s decision harmed the position of owners of sound recordings by “conferring federal defenses that annul or limit state-law rights and remedies, without providing the increased protections that Congress granted in the DMCA (and in other provisions of the Copyright Act) to owners of federally-protected recordings.”90 In other words, an owner of a pre-1972 sound recording is limited by the defenses of the DMCA, but cannot reap the benefits of the DMCA (or anywhere else in the Copyright Act).

The litigation consequences of the Vimeo decision are at least formalistically significant. If the safe harbor applies to pre-1972 sound recordings, then it is the only part of federal copyright law that does so—aside from the provision expressly withholding federal copyright protection.91 This establishes a discontinuity between the scope of rights and the scope of defenses. A copyright owner cannot assert federal protection for its pre-1972 sound recordings and is limited to alternative (though potentially extensive) state protections. However, under Vimeo, such a state claim against a service provider could be defeated by a federal defense found in a law that provides benefits unavailable to the suing party.

Whether this is a problem beyond formal symmetry is a harder question. Although this Contribution is not intended to be an exhaustive theoretical overview of copyright jurisdiction, let alone copyright preemption, a brief discussion is necessary to model the procedural consequences of Vimeo.

Between Vimeo and Escape Media Group, there is a split between the courts of New York state and federal courts seated in New York.92 It is possible that New York state courts will revisit their holding to ensure consistency with the Second Circuit. However, this would require state appellate courts to adopt a deferential stance toward federal restrictions on state law (as interpreted by a federal court). Moreover, Professor Nimmer observes that Vimeo’s application of federal law to determine the scope of non-preempted rights under state law charted “new terrain.”93

This also assumes that Congress is unlikely to amend the Copyright Act to clearly apply section 512(c) against state copyright claims, or even federalize claims for pre-1972 sound recordings altogether. Legislators regularly introduce bills to amend the scope of federal copyright law—most recently, Representatives Darrell Issa (R-CA) and Jerrold Nadler (D-NY) introduced a bill (the “CLASSICS Act”) that would, among other things, allow a defendant to raise the safe harbor limitation against a new digital performance right of pre-1972 sound recordings.94 The bill is supported by a coalition of online streaming services (such as Pandora), as well as owners and royalty administrators of sound recordings (such as RIAA and SoundExchange); broadcasters declined to comment.95 However, this bill, which only extends the digital public performance right to pre-1972 sound recordings, does not clarify the availability of section 512 to other claims involving sound recordings otherwise not protected by federal law.

Assuming the uncertainty persists in both the courts and Congress, what are the consequences for litigants? Plaintiffs in the DMCA cases generally bring a bundle of copyright claims to court. Litigants asserting both pre- and post-1972 sound recordings—a common posture for major record labels suing internet service providers—may sue in federal court, but the Second Circuit made clear that a defendant may apply section 512 against both sets of copyright claims. Federal courts are not shy about disposing of cases on summary judgment through the safe harbor.96

Because of this legal diaspora, plaintiffs with both pre- and post-1972 sound recordings may have three choices if they want to survive a section 512(c) disposition. They could try to split their claims into parallel state and federal litigation. They probably will not do that — copyright litigation tends to be costly and discovery-intensive, and any divergence in factfinding could result in undesirable preclusive effects. Plaintiffs could also try to avoid federal court by asserting only pre-1972 sound recordings in state court against a non-diverse defendant. This is more likely for labels with legacy catalogs.97

Finally, there is the option that the Vimeo plaintiffs are currently pursuing. Now remanded to federal District Court, defendants have moved to dismiss the remaining state law claims as subject to the section 512(c) safe harbor.98 Plaintiffs have taken a peculiar tack: they argue that Vimeo only held that section 512(c) applies to its claims under common-law copyright — but not its state law unfair competition claims, which are not subject to the “infringement of copyright” language interpreted by the Second Circuit.99 They are, essentially, arguing for a tiny exception to the Vimeo “tiny exception.” The court has not yet decided the issue.

This presents a fascinating sort of mirror-universe preemption dispute: nobody is arguing, as they usually would, that a federal copyright claim preempts a state-law unfair competition claim.

Here, there is no federal copyright claim, and there never was any. Instead, the dispute is essentially whether a federal defense is applicable to state claims that would have been preempted in federal court had they been borne out through subject matter for which a federal claim is available. State law unfair competition claims are commonly attached to copyright litigation, but they can be preempted by federal copyright law (though not always).100 It is legitimately unclear which quasi-copyright claims the safe harbor would protect against.

And it is not completely clear that a preemption analysis would settle the problem: after all, the Second Circuit appeared to reject a formal distinction between state and federal copyright claims, at least as applied against an internet service provider. So under Vimeo’s purposive reading of section 512(c), there does not seem to be a meaningful analytic difference between a state copyright claim and a state unfair competition claim that would be preempted by federal law. Allowing either to avoid the safe harbor would create an attractive loophole for owners of pre-1972 sound recordings and impose the same sorts of monitoring and litigation costs on internet companies that Congress sought to limit.

Conclusion

The Vimeo decision may be sensible internet policy, but it tears a gaping hole in the interdimensional universe of copyright preemption through which monsters may arrive. A copyright rationalist should feel sincerely ambivalent about the “tiny exception” of the safe harbor to the noncopyrightability of pre-1972 sound recordings. It seems correct that service providers should not be compelled to assume monitoring costs for a privileged and arbitrary set of works. But the price of the Second Circuit’s “tiny exception” to copyright preemption was an imperfect federalization of state copyright law, implied and retail, allowing for the sort of tricksy pleading that no court should find desirable. For now, service providers can rest easy. For the rest of us, it’s just another step on the march toward wholesale copyright reform.

* Ari Lipsitz graduated New York University School of Law in May 2018. The following extends from one half of the 2017 Problem at the Cardozo BMI Moot Court Competition. In the problem, closely adapted from the fact pattern of Capitol Records v. Vimeo, a record label alleged that 400 files hosted by a video streaming platform infringed its sound recording copyrights. One hundred of those copyrights involved pre-1972 sound recordings, and one part of the question presented was whether the platform could successfully raise the DMCA safe harbor against all asserted recordings. (The other part concerned the appropriate standard of “red flag” knowledge for service providers, which is happily beyond the scope of this Entry.)
2. Capitol Records, LLC v. Vimeo, LLC, 826 F.3d 78 (2d Cir. 2016), cert. denied, 137 S.Ct. 1374 (2017).
3. Id. at 92.
4. See 17 U.S.C. § 301(c). In the argot of the 1976 Act, “fixation” refers to the moment when a work becomes protectable. See § 102(a). For readability purposes, this Contribution shortens “sound recordings fixed before February 15, 1972” to “pre-1972 sound recordings.”
5. See § 512.
6. See generally Capitol Records, LLC v. Vimeo, LLC, 826 F.3d 78 (2d Cir. 2016), cert. denied, 137 S.Ct. 1374 (2017).
7. See 17 U.S.C. § 512(m).
8. See id. at 92–93 (“The financial burdens in either case would be substantial and would likely either dissuade service providers from making large investments in the expansion of the growth and speed of the Internet (which Congress sought to encourage) or perhaps cause them to charge so much for the service as to undermine substantially the public usefulness of the service Congress undertook to promote.”).
9. See Capitol Records, Inc. v. Naxos of Am., Inc., 4 N.Y.3d 540 (2005) (tracing state protection of sound recordings to “fill the void” left by Congress); see also infra note 12.
10. § 301(c). Section 301(c) reads in full:

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. The preemptive provisions of subsection (a) shall apply to any such rights and remedies pertaining to any cause of action arising from undertakings commenced on and after 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. Id.
12. See § 301(a). Section 301(a) reads in full:

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

13. This is sometimes referred to as “common law copyright,” though depending on the state it may stem from statute, common law (under either copyright infringement or a tort such as unfair competition), or a combination. See, e.g., Cal. Civ. Code § 980(a)(2) (West 2011) (granting right of “exclusive ownership” for owners of pre-1972 sound recordings); EMI Records Ltd. v. Premise Media Corp., 2008 N.Y. Misc. Lexis 7485 (N.Y. Sup. Ct. Aug. 8, 2008) (holding fair use available as a defense to New York common law copyright infringement claim); Columbia Broadcasting System Inc. v. Melody Recordings Inc., 341 A.2d 348 (N.J. Sup. Ct. App. Div. 1975) (affirming grant of summary judgment to plaintiff for unfair competition claim alleging record piracy). For a comprehensive overview of various state law copyright regimes, see generally Copyright Office, Federal Copyright Protection for Pre-1972 Sound Recordings 20–49 (Dec. 2011), http://copyright.gov/docs/sound/pre-72-report.pdf (hereinafter “Sound Recordings Report”).
14. Sound Recordings Report, supra note 13, at 83. In fact, the preemption rule for pre-1972 sound recordings provision is one of several peculiar limitations applied to sound recordings throughout the Copyright Act. For example, sound recordings are uniquely not subject to the exclusive right of general public performance — instead, the Act substitutes for a more limited right of public performance “by means of a digital audio transmission.” See 17 U.S.C. § 106(6).
15. Sound Recordings Report, supra note 13, at 14. One treatise argues that it was purely accidental. See 1 Nimmer on Copyright § 2.10[B][1][a][i] (2017). This incoherence is consistent with the general perception that the Copyright Act’s preemption rules are conceptually messy. See, e.g., Joseph P. Bauer, Addressing the Incoherency of the Preemption Provision of the Copyright Act of 1976, 10 Van. J. Ent. & Tech. L. 1, 2 (2007) (describing section 301 as a “legislative failure”). A full discussion of copyright preemption is fortunately beyond the scope of this Contribution.
16. 17 U.S.C. § 301(c).
17. Id.
18. Id. Immediately surrounding the enactment of the DMCA, Congress extended the expiration date from 2047 to 2067. See Sonny Bono Copyright Term Extension Act, Pub L. 105–298, 112 U.S. Stat. 2827, 105th Congress, 2d Sess., Oct. 27, 1998 (amending 17 U.S.C. § 301(c)).
19. See Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 827 F.3d 1016, 1018 n.1 (11th Cir. 2016) (“1 Because Flo & Eddie’s recordings were fixed before February 15, 1972, they enjoy copyright protection, if at all, pursuant to state law.”).
20. Vimeo, 826 F.3d at 92.
21. See 17 U.S.C. §§ 512(a)–(d).
22. Id. § 512(c).
23. See, e.g., UMG Recordings, Inc. v. Shelter Capital Partners LLC, 718 F.3d 1006 (9th Cir. 2013) (affirming grant of § 512(c) safe harbor to video platform on summary judgment);  Viacom Intern., Inc. v. YouTube, Inc., 676 F.3d 19 (2d Cir. 2012) (vacating grant of summary judgment to video platform and remanding to determine whether platform had sufficient knowledge of alleged infringement to foreclose safe harbor); cf. BMG Rights Management (US) LLC v. Cox Communications, Inc., 149 F.Supp.3d 634, 662 (E.D. Va. 2015) (granting summary judgment to plaintiff that service provider was not entitled to § 512(a) safe harbor).
24. 17 U.S.C. §§ 512(c)(1)(A)–(C), 512(i). See generally Jennifer M. Urban & Laura Quilter, Efficient Process or “Chilling Effects”? Takedown Notices Under Section 512 of the Digital Millennium Copyright Act, 22 Santa Clara Computer & High Tech. L.J. 621, 624 (2006) (setting forth mechanics of the safe harbor).
25. Id. § 512(c). See, e.g., Viacom, 676 F.3d at 32 (requiring actual knowledge or awareness of facts and circumstances indicating specific and identifiable instances of infringement to disqualify online service provider from safe harbor); Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007) (setting forth requirements for service providers to raise safe harbor).
26. S. Rep. No. 105-190, at 8 (1998).
27. One source estimates that copyright suits average three times the cost greater than an average civil suit. Am. Intellectual Prop. L. Ass’n, Report of the Economic Survey 35 (2011).
28. S. Rep. No. 105-190, at 8 (1998).
29. Id. at 20.
30. See Daniel Seng, The State of the Discordant Union: An Empirical Analysis of DMCA Takedown Notices, 18 Va. J.L. & Tech. 369, 376 (2014) (examining the frequency and impact of DMCA takedown notices, “the mainstay of content providers for managing online infringement”).
31. See generally Note, Daniel Etcovitch, DMCA § 512 Pain Points: Music and Technology Industry Perspectives in Juxtaposition, 30 Harv. J.L. & Tech. 547, 552 n.33 (2017) (collecting technology stakeholder comments).
32. See also Edward Lee, Decoding the DMCA Safe Harbors, 32 Colum. J.L. & Arts 233, 268 (2009) (arguing “the DMCA safe harbors act as First Amendment safeguards for the internet”).
33. Center for Democracy & Technology & R Street Institute, Before the United States Copyright Office, Library of Congress Section 512 Study, Docket No. 2015–7 (April 1, 2016), available at https://cdt.org/files/2016/04/CDT-R-Street-512-Copyright-comments-20160401.pdf.
34. See 17 U.S.C. § 102(a)(1)–(8) (detailing works protected by the Act).
35. See S. Rep. No. 93–473, at 112–14 (1975) (listing goals of the 1976 Copyright Act to include “promoting national uniformity” and “eliminating divisions in copyrightable subject matter by publication status”).
36. 17 U.S.C. § 301(c).
37. Sound Recordings Report, supra note 13, at 130.
38. Compare Vimeo, 326 F.3d at 93 (“We conclude that the safe harbor established by § 512(c) protects a qualifying service provider from liability for infringement of copyright under state law.”), with Sound Recordings Report, supra note 13, at 132 (“In short, it is for Congress, not the courts, to extend the Copyright Act to pre-1972 sound recordings, both with respect to the rights granted under the Act and the limitations on those rights (such as section 512) set forth in the Act.”).
39. 821 F.Supp.2d 627 (S.D.N.Y. 2011) (holding that “copyright infringement” encompasses federal and state violations), rev’d in part, aff’d in part sub nom. EMI Christian Music Grp. v. MP3tunes, LLC, 840 F.3d 69 (2d Cir. 2016), superseded, 844 F.3d 79.
40. 972 F.Supp.2d 500, 536-37 (S.D.N.Y. 2013), aff’d in part, vacated in part, 826 F.3d 78 (2d Cir. 2016), cert denied, 137 S. Ct. 1374 (2017).
41. Id.
42. Vimeo, 826 F.3d at 93.
43. Id. at 89 (“While we unhesitatingly acknowledge the Copyright Office’s superior expertise on the Copyright Act, we cannot accept its reading of § 512(c). It is based in major part on a misreading of the statute.”); see also Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121, 129 (2d Cir. 2008) (affording only Skidmore deference to a Copyright Office report and rejecting it as unpersuasive).
44. UMG Recs., Inc. v. Escape Media Grp., Inc., 964 N.Y.S. 2d 106, 107 A.D.3d 51 (N.Y. App. Div. 2013).
45. Capitol Records, LLC v. Vimeo, LLC, 137 S. Ct. 1374 (2017).
46.  For one, Professor Nimmer argues the safe harbor does not cover pre-1972 sound recordings. See 4 Nimmer on Copyright § 12B.07[E][3][c]. Professor Patry reviewed the various positions without weighing in. 6 Patry on Copyright 21:85.10 (2017). Commentators generally agree that section 512(c) ought to cover pre-1972 sound recordings (usually as part of a broader advocacy toward copyright federalization), but disagree whether it currently does. See, e.g., P. Dylan Jensen, The Pre-1972 Sound Recordings Landscape: A Need for a Uniform Federal Copyright Scheme, 38 Hastings Comm. & Ent. L.J. 273, 279–82 (2016) (arguing that the issue is genuinely unclear); Tastuya Adachi, Did Vimeo Kill the Radio Star? DMCA, Safe Harbors, Pre-1972 Sound Recordings & the Future of Digital Music, 34 Cardozo Arts & Ent. L.J. 443, 462–64 (2016) (unclear); Brian G. Shaffer, Sirius XM Radio, Inc., Defendant: The Case For a Unified Copyright System for Federal Recordings, 35 Pace L. Rev. 1016, 1024–27 (2015) (should and does); Leigh F. Gill, et al., Time to Face the Music: Current State and Federal Copyright Law Issues With Pre-1972 Sound Recordings, 6 No. 6 Landslide 60, 61 (2014) (unclear); Tong Xu, The Future of Online User-Generated Content in the Video-Sharing Business: Capitol Records LLC v. Vimeo LLC, 17 Tul. J. Tech. & Intell. Prop. 375, 380 (2014) (does not); 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, 65–67 (2009) (uncertain); see generally Andrew M. Pitchin, Casting Common Law and the Music Industry Adrift: Pre-1972 Sound Recordings Enter Federal Safe Harbors, 91 Or. L. Rev. 635 (2012).
47. Sound Recordings Report, supra note 13, at 89–90.
48. See Vimeo, 826 F.3d at 88 (“Plaintiffs argued in the district court, with success, and argue again on this appeal, that the interrelationship of § 301(c) with the safe harbor provision of § 512(c) requires that the latter be interpreted to have no application to pre-1972 sound recordings.”).
49. Id. at 92.
50. 17 U.S.C. § 512(c)(1).
51. See 3 Patry on Copyright 9:1 (2017).
52. Vimeo, 826 F.3d at 90. See also MP3tunes, 821 F.Supp.2d at 641.
53. Vimeo, 826 F.3d at 89.
54. Id. (citing 17 U.S.C. §§ 106, 201(a)).
55. 17 U.S.C. § 512(h) (“A copyright owner or a person authorized to act on the owner’s behalf may request the clerk of any United States district court to issue a subpoena to a service provider for identification of an alleged infringer in accordance with this subsection.”).
56. Id. § 101.
57. Id. § 512(j) (providing for “an injunction under section 502 against a service provider”); see also id. § 502(a) (authorizing courts “having jurisdiction of a civil action arising under this title” to grant injunctions reasonably deemed to prevent or restrain copyright infringement).
58. See id. § 301(c) (“no sound recording fixed before February 15, 1972, shall be subject to copyright under this title before, on, or after February 15, 2067”).
59. See id. § 106.
60. Id. § 501(a).
61. See 4 Nimmer on Copyright § 12B.07[E][3][c][iii][II].
62. Sound Recording Report, supra note 13, at 131–32.
63. Id.
64. 4 Nimmer on Copyright § 12B.07[E][3][c][iii][III].
65. UMG Recs., Inc. v. Escape Media Grp., Inc., 964 N.Y.S.2d 106, 111–12, 107 A.D.3d 51, 58 (N.Y. App. Div. 2013) (emphasis added).
66. Vimeo, 826 F.3d at 89.
67. Cf. Sound Recording Report, supra note 11, at 131 (“Section 512(c) does not include any provision explicitly limiting remedies available for owners of pre-1972 sound recordings.”).
68. Pub. L. No. 105–298, 112 Stat. 2827 (Oct. 27, 1998). This was part of an overall term extension that Congress passed. See H.R. Rep. No. 105–542 (1998) (noting that “[b]ecause this bill will extend the total term of protection for pre-1978 copyrighted works by 20 years, to a total of 95 years, a similar 20-year extension is to be given to [] ‘grandfathered’ pre-February 15, 1972 sound recordings”).
69. See Escape Media, 107 A.D.3d at 59.
70. See 4 Nimmer on Copyright § 12B.07[E][3][c][iv] (observing the DMCA was enacted in response to 1990s-era media uses such as Scientology writings, pornographic GIFs, and clip art, arguing “nobody in Congress was actually thinking in 1998 about online exploitation of The Beatles, The Supremes, and all the others”).
71. Vimeo, 826 F.3d at 90.
72. Id. at 90 (“It is not as if pre-1972 sound recordings were sufficiently outdated [at the time of DMCA enactment] as to render the potential liabilities insignificant. Some of the most popular recorded music of all time was recorded before 1972, including work of The Beatles, The Supremes, Elvis Presley, Aretha Franklin, Barbra Streisand, and Marvin Gaye.”).
73. Id.
74. Id. at 90. See also MP3tunes, 821 F.Supp.2d at 641.
75. Vimeo, 826 F.3d at 90 (“[W]e find no reason to doubt that § 512(c) protects service providers from all liability for infringement of all copyrights established under the laws of the United States, regardless whether established by federal law or by local law under the sufferance of Congress, and not merely from liability under the federal statute.”).
76. Id. at 92.
77. Id. at 99–100.
78. UMG Recs., Inc. v. Escape Media Grp., Inc., 964 N.Y.S. 2d 106, 107 A.D.3d 51 (N.Y. App. Div. 2013).
79. Escape Media, 107 A.D.3d at 55 (citing 17 U.S.C. § 301(c)).
80. Id. at 59
81. Id.
82. See Vimeo, 826 F.3d at 90.
83. See 18 U.S.C. § 512(m).
84. See § 512(c)(3).
85. See Vimeo, 826 F.3d at 83 n.4; see also Devlin Hartline, Endless Whack-A-Mole: Why Notice-and-Staydown Just Makes Sense, Center for the Protection of Intellectual Property, George Mason University (Jan. 14, 2016), https://cpip.gmu.edu/2016/01/14/endless-whack-a-mole-why-notice-and-staydown-just-makes-sense/.
86. See Mark R. Fratrik, How Will the Radio Industry Be Affected by Pre-1972 Music Performers’ Fees (July 27, 2015), www.biakelsey.com/pdf/ImpactOfPre72MusicRoyalties.pdf.
87. See Google, How Google Fights Piracy 6 (2016), https://drive.google.com/file/d/0BwxyRPFduTN2cl91LXJ0YjlYSjA/view.
88. Id.
89. See Vimeo, 826 F.3d at 84; Megan O’Neill, Video Infographic Reveals the Most Impressive YouTube Statistics of 2012, Adweek (Sept. 10, 2012), http://www.adweek.com/digital/video-youtube-statistics-2012/.
90. Petition for Writ of Certiorari at 21, Capitol Records, LLC v. Vimeo, LLC, No. 16-771, (U.S. Dec. 14, 2016), 2016 WL 7321813, at *21.
91. See 17 U.S.C. § 301(c), quoted in full supra note 6.
92. Compare Vimeo, 826 F.3d at 92, with Escape Media Grp., 107 A.D.3d at 58. See also People v. Turner, 5 N.Y.3d 476, 482 (2005) (restating the rule that the holding of an appellate department is binding on state trial courts).
93. See 4 Nimmer on Copyright § 12B.07[E][3][c].
94. H.R. 3301, 115th Cong. (2017).
95. ‘CLASSICS Act’ Would Seek Royalties for Pre-’72 Sound Recordings, Inside Radio (July 20, 2017), http://www.insideradio.com/free/classics-act-would-seek-royalties-for-pre–recordings/article_81656b4a-6d21-11e7-aa46-336811ed6511.html.
96. See, e.g., Viacom Int’l v. YouTube, LLC, 940 F.Supp.2d 110 (S.D.N.Y. 2013) (granting summary judgment to defendant video service for network’s infringement claims); Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (S.D.N.Y. 2012), aff’d, 569 Fed.Appx. 51 (2d Cir. 2014) (granting summary judgment for defendant image-sharing website against artist’s infringement claims); Hendrickson v. eBay, Inc., 165 F. Supp. 1082 (C.D. Cal. 2001) (granting summary judgment for defendant auction website against film copyright claims). Cf. Mavrix Photographs, LLC v. Livejournal, Inc., No. 14–56596, 2017 WL 4446029 (9th Cir. April 7, 2017) (reversing summary judgment for defendant social media website and remanding to determine whether use of volunteer moderators defeats safe harbor eligibility).
97. See, e.g., Escape Media Grp., 107 A.D.3d 51; Capitol Records, LLC v. Harrison Greenwich, LLC, 984 N.Y.S.2d 274 (Sup. Ct. 2014) (granting summary judgment for common law copyright infringement of 1970 recording).
98. Memorandum of Law in Support of Vimeo’s Motion to Dismiss Capitol Records’ Unfair Competition Claims, Capitol Records, LLC v. Vimeo, LLC, Nos. 09 Civ. 10101 (RA), 09 Civ. 10105 (RA) (S.D.N.Y. July 17, 2017), 2017 WL 4100472.
99. Plaintiffs’ Opposition to Vimeo’s Motion to Dismiss Capitol Records’ Unfair Competition Claims, Capitol Records, LLC v. Vimeo, LLC, Nos. 09 Civ. 10101 (RA), 09 Civ. 10105 (RA) (S.D.N.Y. August 16, 2017), 2017 WL 4100469.
100. See Capitol Records, Inc. v. Naxos of Am., Inc., 830 N.E.2d 250, 266 (N.Y. 2005) (answering a certified question from the Second Circuit by stating that that unfair competition and copyright infringement “are not synonymous” under New York law).