throbber
No. 16-771
`In the
`Supreme Court of the United States
` 
`
`CAPITOL RECORDS, LLC, et al.,
`
`Petitioners,
`
`– v. –
`
`VIMEO, LLC, et al.,
`
`Respondents.
`____________________________
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`BRIEF OF AMICUS CURIAE ABKCO MUSIC
`& RECORDS, INC. IN SUPPORT OF
`PETITION FOR WRIT OF CERTIORARI
`
`DONALD S. ZAKARIN
` Counsel of Record
`ROSS M. BAGLEY
`PRYOR CASHMAN LLP
`Attorneys for Amicus Curiae
`ABKCO Music & Records, Inc.
`7 Times Square
`New York, New York 10036
`(212) 326-4100
`dzakarin@pryorcashman.com
`rbagley@pryorcashman.com
`
`
`
`
`
`
`
`

`

`
`
`i
`
`TABLE OF CONTENTS
`
`INTERESTS OF THE AMICUS CURIAE ........
`SUMMARY OF THE ARGUMENT ...................
`ARGUMENT
`I.
`The Decision Created A Stark Split
`Between Federal And State Law .......
`II. The Decision Violates Separation
`of Powers Principles ...........................
`III. The Decision’s Reasoning Leads To
`Arbitrary Results ...............................
`CONCLUSION ...................................................
`
`
`Page
`1
`4
`
`7
`
`13
`
`17
`19
`
`

`

`

`

`
`
`iii
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`16
`
`Cases:
`ABC, Inc. v. Aereo, Inc.,
`134 S. Ct. 2498 (2014) .....................................
`Capitol Records, Inc. v. Greatest Records, Inc.,
`43 Misc. 2d 878 (N.Y. Sup. Ct. 1964) .......... 11n.11
`Capitol Records, Inc. v. Mercury Record Corp.,
`109 F. Supp. 330 (D.N.Y. 1952), aff’d,
`221 F.2d 657 (2d Cir. 1955) ......................... 11n.11
`Capitol Records, Inc. v. MP3tunes, LLC,
`821 F. Supp. 2d 627 (S.D.N.Y. 2011) .......... 15n.14
`Capitol Records, Inc. v. Naxos of
`Am., Inc., 4 N.Y.3d 540 (2005) ....... 10n.10, 11n.11
`Capitol Records, Inc. v. Naxos of Am., Inc.,
`372 F.3d 471 (2d Cir. 2004) ............................
`Capitol Records, LLC v. Vimeo, LLC,
`972 F. Supp. 2d 537 (S.D.N.Y. 2013) .......... 15n.14
`Flo & Eddie Inc. v. Sirius XM
`Radio Inc., No. CV 13-5693 PSG,
`2014 U.S. Dist. LEXIS 139053
`(C.D. Cal. Sept. 22, 2014) ............................... 9n.8
`Flo & Eddie, Inc. v Sirius XM
`Radio, Inc., No. 172, 2016 N.Y.
`LEXIS 3811 (Dec. 20, 2016) .... 2n.3, 10, 11, 11n.11
`Flo & Eddie, Inc. v. Pandora Media, Inc.,
`No. CV 14-07648 PSG, 2015 U.S. Dist. LEXIS
`70551 (C.D. Cal. Feb. 23, 2015), appeal filed
`No. 15-55287 (9th Cir. Feb. 24, 2015) ............ 9n.8
`
`8
`
`

`

`
`
`iv
`
`4
`
`16
`
`Flo & Eddie, Inc. v. Sirius XM Radio, Inc.,
`821 F.3d 265 (2d Cir. 2016) ....................... 7, 9, 10
`Flo & Eddie, Inc. v. Sirius XM Radio, Inc.,
`No. 13-cv-23182, 2015 U.S. Dist. LEXIS
`80535 (S.D. Fla. June 22, 2015) ..................... 9n.8
`Gieseking v. Urania Records, Inc.,
`17 Misc. 2d 1034 (N.Y. Sup. Ct. 1956) ........ 11n.11
`Goldstein v. California,
`412 U.S. 546 (1973) .........................................
`Greater Recording Co. v. Stambler,
`144 U.S.P.Q. 547 (N.Y. Sup. Ct. 1965) ........ 11n.11
`La Cienega Music Co. v. ZZ Top,
`53 F.3d 950 (9th Cir. Cal. 1995) .....................
`Metropolitan Opera Ass’n Inc. v. Wagner-
`Nichols Recorder Corp., 199 Misc. 786
`(N.Y. Sup. Ct. 1950), aff’d, 279 A.D. 632
`(1st Dep’t 1951) ....................................... 11-12n.11
`Radio Corp. of Am. v. Premier Albums, Inc.,
`19 A.D.2d 62 (1st Dep’t 1963) ...................... 11n.11
`Stewart v. Abend,
`495 U.S. 207 (1990) ......................................... 13, 14
`UMG Recordings, Inc. v. Escape Media
`Grp., Inc., 107 A.D.3d 51
`(1st Dep’t 2013) .......................................... 8, 13, 14
`Federal Statutes:
`17 U.S.C. § 108 ...................................................
`17 U.S.C. § 109 ...................................................
`17 U.S.C. § 112 ...................................................
`
`17
`17
`17
`
`

`

`
`
`v
`
`17 U.S.C. § 114 ....................... 5, 9n.9, 10, 17, 17n.15
`17 U.S.C. § 204 ...................................................
`17
`17 U.S.C. § 205 ...................................................
`17
`17 U.S.C. § 301 .................................... 6, 8n.6, 10, 13
`17 U.S.C. § 301(c) ............................................ passim
`17 U.S.C. § 303 ...................................................
`16
`17 U.S.C. § 303(b) ...............................................
`16
`17 U.S.C. § 407 ...................................................
`17
`17 U.S.C. § 408 ...................................................
`17
`17 U.S.C. § 410 ...................................................
`17
`17 U.S.C. § 412 ...................................................
`17
`17 U.S.C. § 501 ................................................... 9n.9
`17 U.S.C. § 502 ...................................................
`18
`17 U.S.C. § 503 ...................................................
`18
`17 U.S.C. § 503(a) ............................................ 18n.16
`17 U.S.C. § 504 ...................................................
`18
`17 U.S.C. § 504(c) ............................................ 18n.16
`17 U.S.C. § 505 ........................................... 18, 18n.16
`17 U.S.C. § 512 ................................................ passim
`17 U.S.C. § 512(c) ............................................ passim
`17 U.S.C. § 512(h) ...............................................
`18
`17 U.S.C. § 512(j) ................................................
`18
`H.R. Rep. No. 94-1476 (1976) .............................
`13
`
`

`

`
`
`vi
`
`14
`
`13
`
`H.R. Rep. No. 94-1733 (1976) .............................
`Pub. L. No. 105-298, § 102(a), 112 Stat. 2827
`(1998) ...............................................................
`Pub. L. No. 105-304, Title I, 112 Stat. 2860
`13
`(1998) ...............................................................
`13
`Pub. L. No. 94-553, 90 Stat. 2541 ......................
`13
`S. Rep. 94-473 (1975)..........................................
`Supreme Court Rule 37(2)(a) ............................. 1n.1
`State Statutes:
`18 Pa. Cons. Stat. Ann. § 4116 ........................... 4n.4
`Cal. Civ. Code § 980(a)(2) .................................. 4n.4
`Fla. Stat. Ann. §§ 540.11(2)(a)(1)-(2) ................ 4n.4
`Mich. Comp. Laws Ann. §§ 752.1052(b)-(c) ....... 4n.4
`N.J. Stat. Ann. §§ 2C:21-21(c)(1)-(2) .................. 4n.4
`New York State Constitution,
`Article 6 § 3(b)(9) ............................................ 9n.7
`New York State Court of Appeals
`Rules of Practice, § 500.27(a) ......................... 9n.7
`Tex. Bus. & Com. Code § 641.051 ...................... 4n.4
`Wisc. Stat. Ann. § 943.207 ................................. 4n.4
`Other Authority:
`2 NIMMER ON COPYRIGHT § 8.21[C][2] (2015) ....
`13
`11
`2 NIMMER ON COPYRIGHT § 8C.03 (2015) ...........
`2 NIMMER ON COPYRIGHT, § 8C.03[B] (2015)..... 4n.4
`
`

`

`
`
`vii
`
`http://www.project-72.org/documents/
`BILLS-113hr4772ih.pdf (last visited
`January 12, 2017) ........................................ 15n.13
`S.A. Diamond, Sound Recordings and
`Phonorecords: History and Current Law,
`2 U. Ill. Law Forum 337 (1979) ...................... 4n.4
`U.S. Copyright Office, Report on Federal
`Copyright Protection for Pre-1972
`Sound Recordings (Dec. 2011) ........................ 10, 13
`
`

`

`
`
`1
`
`ABKCO Music & Records, Inc. (“AMR”) respectfully
`submits this Amicus Curiae brief in support of the
`petition for a writ of certiorari (the “Petition”) of
`petitioners Capitol Records, LLC, Caroline Records,
`Inc., Virgin Records America, Inc., EMI Blackwood
`Music, Inc., EMI April Music, Inc., EMI Virgin Music,
`Inc., Colgems-EMI Music, Inc., EMI Virgin Songs,
`Inc., EMI Gold Horizon Music Corp., EMI Unart
`Catalog Inc., Stone Diamond Music Corporation, EMI
`U Catalog, Inc., and Jobete Music Co., Inc.
`(“Petitioners”) to review the judgment of the United
`States Court of Appeals for the Second Circuit
`following its June 16, 2016 opinion (the “Decision”)
`holding that sound recordings which are otherwise
`excluded from coverage under the United States
`Copyright Act (known as “pre-72 Recordings”) are
`nonetheless subject to the so-called “Safe Harbor”
`requirements of Section 512(c) of the Copyright Act
`(the “Act”).1
`INTERESTS OF THE AMICUS CURIAE
`AMR, a small privately held music company, owns
`a valuable catalogue of sound recordings, including
`recordings by: The Rolling Stones; the Animals;
`Chubby Checker; Billy Preston; the Soul Stirrers; and
`Sam Cooke. These recordings are pre-1972 Recordings
`(i.e., “fixed” before February 15, 1972, the effective
`date of the Sound Recording Amendment). The value
`
`
`1 No party’s counsel authored any part of this brief. No person
`other than AMR or its counsel contributed money that was
`intended to fund the preparation or submission of this brief.
`AMR provided timely notice and received written letters of
`consent from the parties to file this amicus brief pursuant to
`Supreme Court Rule 37(2)(a).
`
`

`

`
`
`2
`
`of these recordings which are some of the most iconic
`recordings of the pop/rock era2 has been and continues
`to be substantially diminished by rampant piracy by
`users of “Internet Service Providers.” (Pet. 21.)
`Because AMR’s recordings are pre-72 Recordings,
`AMR has none of the rights or remedies provided to
`the owners of federally copyrighted sound recordings
`(“post-72 Recordings”). For example, when its works
`are illegally copied, AMR cannot, under the Act,
`obtain (i) an injunction, impoundment or destruction
`of the illegal copies; (ii) damages and profits or, in lieu
`thereof, statutory damages; or (iii) attorneys’ fees.
`Absent diversity, AMR cannot sue in Federal Court.
`Its rights to these recordings, and its remedies for any
`violations of those rights, are purely a matter of the
`individual common or statutory law of the fifty
`different states.3
`
`2 Among AMR’s pre-72 Recordings are “Satisfaction”, “Gimme
`Shelter”, “Sympathy for the Devil” and “You Can’t Always Get
`What You Want” by the Rolling Stones; The Animals’, “House of
`the Rising Sun”, Sam Cooke’s, “Wonderful World” and “A Change
`is Gonna Come” and “The Twist” by Chubby Checker.
`3 While reaffirming that the state’s law protects against
`unlawful copying and reproduction of pre-72 Recordings, the
`New York State Court of Appeals has just recently determined
`that New York’s common law does not provide any copyright
`protection for the public performance of pre-72 Recordings, but
`that performance claims may exist under the common law of
`unfair competition or misappropriation theories. See Flo &
`Eddie, Inc. v Sirius XM Radio, Inc., No. 172, 2016 N.Y. LEXIS
`3811, at *27 (Dec. 20, 2016). The Decision’s focus on the supposed
`significance of the term “infringement” as used in Section 512
`rather than “infringement” “under this title” suggests that while
`a claim of infringement under state common law copyright is
`subject to satisfaction of a federal precondition, a claim of unfair
`
`

`

`
`
`3
`
`Contrary to Congress’s explicit command in Section
`301(c) of the Act that state interests in pre-72
`Recordings shall not be preempted by federal
`copyright
`law,
`the Decision
`conditioned
`the
`availability of state law remedies, at least for common
`law copyright infringement claims, upon AMR’s
`compliance with the requirements of Section 512(c),
`effectively superimposing a federal requirement that
`potentially may be on all of the differing rights and
`remedies available under the laws of all 50 states.
`This judicially enacted “tiny exception” to Section
`301(c) thus federalizes conditions precedent to any
`suits brought solely under state law for remedies
`provided, if at all, under state law, thereby severely
`limiting what owners of pre-72 Recordings can do in
`response to piracy without any corresponding benefit.
`AMR’s potentially available state law rights and
`remedies, not necessarily for common law copyright
`infringement only, have thus been curtailed by
`judicial fiat in a Decision that focuses on the word
`“infringement” used in Section 512, overlooking that
`there are state common law rights that do not
`technically constitute “infringement” claims but
`which provide protection against the unauthorized
`use of pre-72 Recordings under different common law
`theories. The Decision also ignores that AMR has been
`subjected to this precondition to suit even as it is
`denied any of the rights and remedies of federal
`
`competition or misappropriation might not be subject to the
`precondition. This multiplies the issues created by the Decision
`as the other 49 states may have differing views about whether
`public performance rights of pre-72 Recordings are protected
`under common law copyright or under other common law
`theories.
`
`

`

`
`
`4
`
`copyright ownership fully available to the owners of
`post-72 Recordings. This Court should grant certiorari
`and reverse the Decision, leaving it to Congress to
`decide whether to alter the careful balance it has
`struck between works protected by the Act and hence
`subject to corresponding restrictions, and those works
`remaining subject only to state law rights and
`protections.
`SUMMARY OF THE ARGUMENT
`Because pre-72 Recordings are not protected under
`the Act, AMR has had to protect its recordings under
`state law. Even prior to the enactment of the 1976
`amendment to the Act, in Goldstein v. California, 412
`U.S. 546 (1973), the Supreme Court held that federal
`law did not preempt state protection of sound
`recordings. Congress continued this regime in the Act,
`explicitly providing that state law rights in pre-72
`Recordings were excluded from preemption until
`2047. See 17 U.S.C. § 301(c) (extended under the
`“Sonny Bono Act” in 1998 to 2067). Currently, the
`statutory and/or common law of most states provide
`some form of protection for pre-1972 Recordings,
`whether under state common law copyright or under
`principles of unfair competition or misappropriation.4
`The Decision ignores that there are a variety of
`
`4 See generally S.A. Diamond, Sound Recordings and
`Phonorecords: History and Current Law, 2 U. Ill. Law Forum 337
`(1979). This protection is reflected either in state statutes, e.g.,
`Cal. Civ. Code § 980(a)(2), Fla. Stat. Ann. §§ 540.11(2)(a)(1)-(2),
`Mich. Comp. Laws Ann. §§ 752.1052(b)-(c), N.J. Stat. Ann. §§
`2C:21-21(c)(1)-(2), 18 Pa. Cons. Stat. Ann. § 4116, Tex. Bus. &
`Com. Code § 641.051, Wisc. Stat. Ann. § 943.207 and/or the
`common law as decided by both federal and state courts. See 2
`NIMMER ON COPYRIGHT, § 8C.03[B] at 8 (citing numerous cases).
`
`

`

`
`
`5
`
`common law rights implicated by the unauthorized
`exploitation of pre-72 Recordings, not merely common
`law copyright infringement claims.
`At its root, the Petition asks this Court to fix a
`simple and clear error. In Section 301(c) of the Act,
`Congress legislated that “[w]ith 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 the Act]
`until February 15, 2067.” This unequivocal language
`means that, absent an express legislative exception, it
`is for the states alone to dictate the nature and scope
`of common law protection of pre-72 Recordings until
`2067. Nevertheless, in the Decision, the Second
`Circuit carved out an exception to Section 301(c) that
`has neither textual nor logical support, holding that
`Internet Service Providers can avail themselves of the
`Digital Millennium Copyright Act’s Section 512(c)
`Safe Harbor defense in response to, at least, state law
`“infringement” claims by owners of pre-1972
`Recordings like AMR. The Decision did not grant
`owners of pre-72 Recordings any concomitant benefits
`under the Act or find that any other provisions of the
`Act apply to pre-72 Recordings. This is of critical
`importance because state laws do not provide rights
`or remedies equivalent to the rights provided under
`the Act (such as attorney’s fees, statutory damages,
`impoundment, injunctive relief or, at least under
`New York’s common law copyright, any public
`performance rights in sound recordings provided in
`Section 114).5 Yet, in disregard of the explicit carve-
`
`5 As noted, although New York has decided that New York’s
`common law copyright does not provide for infringement of
`public performance rights in pre-72 Recordings, the New York
`
`

`

`
`
`6
`
`out of Section 301(c), the Decision further reduces
`AMR’s already lesser state rights by subjecting them
`to the same Safe Harbor requirements imposed on
`post-72 Recordings which have all of the protections,
`rights and statutory remedies not available to the
`owners of pre-72 Recordings that are afforded under
`the Act, based largely on the Second Circuit’s focus on
`the word “infringement” as used in Section 512
`without the use of three additional words “under this
`title.”
`The Petition should be granted and the Decision
`should be reversed because: (1) the Decision directly
`conflicts with New York’s holdings concerning New
`York’s own common law rights; (2) it has legislated
`new federal copyright law limiting rights and
`remedies in contravention of Section 301; and (3) it
`has created imbalance and inconsistency by applying
`a federal scheme that limits the rights of state-law
`copyright holders without providing any of the
`corresponding benefits of federal copyright protection.
`The Decision is unsupportable and profoundly unfair;
`this Court should grant Petitioners’ writ of certiorari
`and reverse.
`
`
`
`
`
`Court of Appeals expressly noted that it does not preclude claims
`for unfair competition or misappropriation.
`
`

`

`
`
`7
`
`ARGUMENT
`I. The Decision Created A Stark Split
`Between Federal And State Law
`As explained in the Petition, the Decision is directly
`at odds with the law of New York state. (Pet. 17-20.)
`As the Court is aware, “[i]n 1971, Congress amended
`the Copyright Act to grant
`limited copyright
`protection to sound recordings fixed on or after
`February 15, 1972, while expressly preserving state-
`law property rights in sound recordings fixed before
`that date.” Flo & Eddie, Inc. v. Sirius XM Radio, Inc.,
`821 F.3d 265, 269 (2d Cir. 2016) citing 17 U.S.C. §
`301(c).
`In 2013 New York’s Appellate Division, First
`Department – the highest court in New York to
`consider the issue – unambiguously held that Section
`512(c)’s “safe harbor” requirement does not apply to
`claims of common law infringement, explaining in a
`unanimous opinion that:
`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. Had the DMCA never been
`enacted, there would be no question that UMG
`[i.e., plaintiff Universal Music Group] 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
`[the
`Internet Service Provider
`defendant]. However, were the DMCA to apply as
`defendant believes, that right to immediately
`commence an action would be eliminated. Indeed,
`the only remedy available to UMG would be
`service of a takedown notice on defendant. This
`
`

`

`
`
`8
`
`is, at best, a limitation on UMG’s rights, and an
`implicit modification of the plain language of
`section 301(c). The word “limit” in 301(c) is
`unqualified, so defendant’s argument that the
`DMCA does not contradict that section because
`UMG still retains the right to exploit its
`copyrights, to
`license them and to create
`derivative works, is without merit. Any material
`limitation, especially the elimination of the
`right to assert a common-law infringement
`claim, is violative of section 301(c) of the
`Copyright Act.
`UMG Recordings, Inc. v. Escape Media Grp., Inc., 107
`A.D.3d 51, 57-58 (1st Dep’t 2013) (emphasis supplied).
`Despite its own pronouncement over a decade ago in
`Capitol Records, Inc. v. Naxos of Am., Inc., 372 F.3d
`471, 478 (2d Cir. 2004) that “it is entirely up to New
`York to determine the scope of its common law
`copyright with respect to pre-1972 sound recordings,”
`the Second Circuit disregarded this determination by
`an appellate New York court concerning the scope of
`New York’s common law right.6
`
`
`6 The Decision contends that “to the extent that Congress can be
`said to have repealed by § 512(c) an aspect of the rule it had
`previously exacted in § 301(c), it was not by implication but by
`specific statement,” however the “specific statement” it identifies
`is “[a] service provider shall not be liable … for infringement of
`copyright….” Pet. App. 25a. On the contrary, the only
`infringement addressed by the Act is an infringement of federal
`statutory copyright, not any state common law copyright, which,
`as Section 301(c) makes clear, is not the subject of the Act.
`Section 512 nowhere references Section 301 or pre-72
`Recordings, but does reference other specific federal rights under
`the Act.
`
`

`

`
`
`9
`
`Because the issue decided by the Second Circuit
`interprets (actually rewrites) a federal statute to
`superimpose it on the exercise of state common law
`(and in some states, statutory) rights, certification to
`the New York Court of Appeals was not an available
`mechanism here.7 By way of recent example, in Flo &
`Eddie, Inc. v. Sirius XM Radio, Inc., 821 F.3d 265, 267
`(2d Cir. 2016) – a suit by the owner of a catalogue of
`pre-72 Recordings who also sued under state laws in
`Florida and California to enforce its rights8 – Sirius
`XM Radio appealed a decision from the Southern
`District of New York holding that New York affords a
`common law right of public performance. Although a
`federal law enacted in 1995, the Digital Performance
`Right in Sound Recordings Act,9 had accorded owners
`of sound recordings a right to control or authorize
`public performance “by means of a digital audio
`transmission [only]” the Second Circuit resisted
`creating another “tiny exception” to Section 301(c) in
`
`7 Article 6 § 3(b)(9) of New York’s Constitution and § 500.27(a)
`of the New York Court of Appeals rules of practice provide the
`procedure for referring a certified question.
`8 See Flo & Eddie Inc. v. Sirius XM Radio Inc., No. CV 13-5693
`PSG, 2014 U.S. Dist. LEXIS 139053 (C.D. Cal. Sept. 22, 2014);
`Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 13-cv-23182, 2015
`U.S. Dist. LEXIS 80535 (S.D. Fla. June 22, 2015). A parallel case
`brought against Pandora Media, Inc., an internet radio provider,
`is also currently before the Ninth Circuit. Flo & Eddie, Inc. v.
`Pandora Media, Inc., No. CV 14-07648 PSG, 2015 U.S. Dist.
`LEXIS 70551 (C.D. Cal. Feb. 23, 2015), appeal filed No. 15-55287
`(9th Cir. Feb. 24, 2015).
`9 Similar to Section 501, Section 114 identifies the rights
`granted under certain sections of the Act, clearly signaling that
`state copyrights are not implicated.
`
`

`

`
`
`10
`
`Flo & Eddie.10 But it certified the question there
`because, unlike here, the issue of whether a public
`performance right in pre-72 Recordings was subject to
`protection under New York common law copyright
`(being excluded from regulation under Section 114 by
`virtue of Section 301) involved purely the scope of
`state copyright protection. Id. at 272.
`The New York Court of Appeals found that New
`York’s common law copyright provided no public
`performance right, citing favorably the U.S. Copyright
`Office’s report on Federal Copyright Protection for
`Pre-1972 Sound Recordings (Dec. 2011) (“Copyright
`Office Report”), the same Copyright Office Report that
`the Second Circuit downplayed in the Decision. See
`Flo & Eddie, Inc., 2016 N.Y. LEXIS 3811, at *27.
`While the New York Court of Appeals suggested that
`the owners of pre-72 Recordings may well find
`protection for performance rights under the law of
`unfair competition, it wisely concluded that issues of
`copyright law, including common law copyright law,
`are often better addressed by the appropriate
`legislative body, explaining that:
`[I]t cannot be overstated that, if this Court were
`to recognize a right of public performance under
`the common law, we would be ill-equipped — or
`simply unable — to create a structure of rules to
`properly guide the application of that right. The
`legislative branch, on the other hand, is uniquely
`
`10 The Second Circuit showed similar restraint in certifying the
`question “whether there is common-law copyright protection in
`New York for sound recordings made prior to 1972” in Capitol
`Records, Inc. v. Naxos of Am., Inc., 4 N.Y.3d 540, 544 (2005)] a
`question the Court of Appeals answered in the affirmative.
`
`

`

`
`
`11
`
`qualified, and imbued with the authority, to
`conduct the required balancing of interests and
`make the necessary policy choices.
`Id. at *33-34.
`Here, the Decision creates such an unstructured
`environment, imposing the restrictions of a federal
`statute on the exercise of purely state law rights
`(which exist under differing state laws of the 50 states
`which are not limited to common law copyright),
`requiring owners of pre-72 Recordings to satisfy the
`requirements of federal law as a precondition to
`enforcing their rights under state common law
`copyright (and potentially, under a variety of legal
`claims,
`including misappropriation,
`unfair
`competition and other property right theories that do
`not entail “infringement” claims). 2 NIMMER ON
`COPYRIGHT § 8C.03 (2015).11 Just as the Decision
`
`11 See, e.g., Flo & Eddie, Inc., 2016 N.Y. LEXIS 3811, at *37
`(“[W]e note that sound recording copyright holders may have
`other causes of action, such as unfair competition, which are not
`directly tied to copyright law.”); Capitol Records, Inc. v. Naxos of
`Am., Inc., 4 N.Y.3d 540, 563 (2005) (“Copyright infringement is
`distinguishable from unfair competition, which in addition to
`unauthorized copying and distribution requires competition in
`the marketplace or similar actions designed for commercial
`benefit.”) (citations omitted); Capitol Records, Inc. v. Mercury
`Record Corp., 109 F. Supp. 330, 345- 346 (D.N.Y. 1952), aff’d, 221
`F.2d 657 (2d Cir. 1955) (unfair competition); Radio Corp. of Am.
`v. Premier Albums, Inc., 19 A.D.2d 62, 63-64 (1st Dep’t 1963)
`(misappropriation); Greater Recording Co. v. Stambler, 144
`U.S.P.Q. 547 (N.Y. Sup. Ct. 1965) (misappropriation); Capitol
`Records, Inc. v. Greatest Records, Inc., 43 Misc. 2d 878, 880-82
`(N.Y. Sup. Ct. 1964) (common law copyright, unfair competition);
`Gieseking v. Urania Records, Inc., 17 Misc. 2d 1034, 1035 (N.Y.
`Sup. Ct. 1956) (unfair competition); Metropolitan Opera Ass’n
`Inc. v. Wagner-Nichols Recorder Corp., 199 Misc. 786, 802 (N.Y.
`
`

`

`
`
`12
`
`ignores the unavailability of the remedies provided by
`the Act to pre-72 Recordings, so too does it ignore the
`variety of state law causes of action, leaving unclear
`as well whether compliance with Section 512(c) is also
`a precondition to the pursuit of state law rights other
`than common law copyright infringement claims
`(where the Decision focuses on the meaning of the
`word “infringement”).
`The Second Circuit opted here to re-write Section
`512(c) rather than allowing Congress to act, ignoring
`that a New York appellate court rejected the
`superimposition of a federal precondition for the
`enforcement of a state common law right. The result
`is that New York and
`federal
`law are now
`diametrically opposed on whether New York common
`law rights are subject to the satisfaction of a federal
`precondition, with no clarity as to whether the
`precondition is dependent on whether the claim is for
`“infringement” of common law copyright or invokes
`state unfair competition and misappropriation claims.
`Action by Congress, which has the authority to
`preempt equivalent state law rights by legislation,
`could have avoided opposite federal and state rules.
`The Decision has mistakenly engaged in a legislative
`function and certiorari should be granted so that it
`may be reversed.
`
`
`
`
`
`Sup. Ct. 1950), aff’d, 279 A.D. 632 (1st Dep’t 1951) (unfair
`competition).
`
`

`

`
`
`13
`
`II. The Decision Violates Separation of Powers
`Principles
`The Act, including Section 301, was the product of
`more than twenty years of hearings, testimony,
`reports and debate. See Act of October 19, 1976, Pub.
`L. No. 94-553, 90 Stat. 2541; H.R. Rep. No. 94-1476,
`at 47-50 (1976); S. Rep. 94-473 (1975); H.R. Rep. No.
`94-1733 (1976) (Conference Report). The Digital
`Millennium Copyright Act was enacted in 1998 after
`extensive hearings weighing the interests of copyright
`owners and Internet Service Providers, Pub. L. No.
`105-304, Title I, 112 Stat. 2860 (1998); 2 NIMMER,
`supra § 8.21[C][2], and it was enacted against the
`backdrop of a clear Congressional statement in
`Section 301
`that specifically excluded pre-72
`Recordings from coverage under the Act. Congress
`struck a balance and if that balance is to be adjusted,
`it is a task for Congress, not the Second Circuit. UMG
`Recordings, Inc., 107 A.D.3d at 59; Stewart v. Abend,
`495 U.S. 207, 230 (1990) (“it is not our role to alter the
`delicate balance Congress has labored to achieve” in
`the Act); Copyright Office Report at p. 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.”).
`In crafting that balance, Congress excluded pre-72
`Recordings in Section 301 from federal preemption in
`the most “unequivocal language possible.” H.R. Rep.
`No. 94-1476, at 61. When Congress decided to afford
`protection to service providers through the “Safe
`Harbor” of Section 512, it balanced that protection
`against the rights and remedies it made available
`exclusively to works subject to federal copyright.
`
`

`

`
`
`14
`
`In saddling pre-72 Recordings – which are protected,
`if at all, only under state law – with compliance with
`the “Safe Harbor” requirements, the Decision
`upended that calibrated balance, imposing burdens on
`pre-72 Recordings without
`there being any
`corresponding benefits. In other words, the Decision
`invades the province of Congress in carving out an
`exception to that exclusion that Congress did not
`create. Stewart, at 495 U.S. at 228 (rejecting policy
`arguments regarding copyright law like those on
`pages 29-30 and 36 of the Decision because “[t]hese
`[policy] arguments are better addressed by Congress
`than the courts.”).
`Even with regard to policy, the Second Circuit’s
`analysis
`is one-sided. As explained
`in UMG
`Recordings, Inc. v. Escape Media Group, Inc., “[t]he
`statutory language at issue involves two equally clear
`and compelling Congressional priorities: to promote
`the existence of intellectual property on the Internet,
`and to insulate pre-1972 sound recordings from
`federal regulation.” 107 A.D.3d 51, 59 (1st Dep’t
`2013) (emphasis supplied). The second interest, a
`state interest, was completely disregarded in the
`Decision. (Pet. 32.) This is after Congress itself re-
`affirmed the importance of this interest in 1998 when
`it extended the sunset date for exclusive state
`governance by 20 years to 2067, one day before Section
`512(c) was passed. See Pub. L. No. 105-298, § 102(a),
`112 Stat. 2827 (1998) (codified at 17 U.S.C. § 301(c)).12
`
`
`12 Contrary to the Decision, it would not “defeat the purpose” of
`Section 512(c) to leave states to determine their own safe-harbor
`provisions for pre-72 sound recordings, Pet. App. 20a, 26a, which
`are a group of highly valuable works that were expressly
`
`

`

`
`
`15
`
`The Decision posits that after all of the drafting and
`research that went into the Act’s provisions relating
`to pre-72 Recordings, Congress must have
`inadvertently neglected to include language stating
`that Section 512(c) alone applies to them. This is
`implausible considering that Congress commissioned
`the Copyright Office Report which concluded in 2011
`that Section 512 did not apply to pre-72 Recordings,13
`and that by 2013 federal district courts had split on
`this pure question o

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