throbber

`
`No. 16-771
`
`IN THE
`Supreme Court of the United States
`
`_______________
`CAPITOL RECORDS, LLC, CAROLINE RECORDS, INC.,
`VIRGIN RECORDS AMERICA, INC., EMI BLACKWOOD
`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.,
`JOBETE MUSIC CO., INC., Petitioners,
`v.
`VIMEO LLC, CONNECTED VENTURES, LLC,
`DOES, 1-20 INCLUSIVE, Respondents.
`_______________
`On Petition for a Writ of Certiorari
`to the United States Court of Appeals
`for the Second Circuit
`_______________
`BRIEF OF THE RECORDING INDUSTRY
`ASSOCIATION OF AMERICA, INC., THE
`AMERICAN ASSOCIATION OF INDEPENDENT
`MUSIC, INC., AND CONCORD MUSIC GROUP,
`INC., AS AMICI CURIAE
`IN SUPPORT OF PETITIONERS
`_______________
`GEORGE M. BORKOWSKI
`KENNETH L. DOROSHOW
`RECORDING INDUSTRY
`Counsel of Record
`ERICA L. ROSS
`ASSOCIATION OF
`JENNER & BLOCK LLP
`AMERICA, INC.
`1099 New York Ave., NW
`1025 F. Street, NW
`Suite 900
`Tenth Floor
`Washington, DC 20001
`Washington, DC 20004
`(202) 639-6000
`(202) 775-0101
`kdoroshow@jenner.com
`
`Counsel for Amici Curiae
`
`
`
`

`

`i
`QUESTION PRESENTED
`
`
`Section 301(c) of the Copyright Act states 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 Copyright Act] until
`February 15, 2067.”
`
`The question presented is whether the Second
`Circuit erred in holding, contrary to the considered view
`of the United States Copyright Office and in conflict
`with New York state appellate courts, that when
`Congress enacted the Digital Millennium Copyright Act
`and added section 512 to the Copyright Act, it implicitly
`limited and preempted the very state-law rights and
`remedies that section 301(c) says “shall not be annulled
`or limited.”
`
`
`
`
`
`
`
`

`

`ii
`TABLE OF CONTENTS
`
`INTRODUCTION AND SUMMARY OF
`
`QUESTION PRESENTED ............................................ i
`TABLE OF AUTHORITIES ....................................... iv
`INTEREST OF THE AMICI CURIAE ..................... 1
`ARGUMENT ............................................................. 3
`ARGUMENT .................................................................... 5
` PRE-1972 SOUND RECORDINGS
`FEDERAL LAW. .................................................... 5
` THE IRRECONCILABLE SPLIT
`ON THE MUSIC INDUSTRY. .............................. 8
`A. The Decision Below Creates A Direct
`The Other. ........................................................... 8
`
`REMAIN CULTURALLY AND
`ECONOMICALLY SIGNIFICANT AND
`THEIR STATE-LAW PROTECTIONS
`SHOULD NOT BE UNDERMINED BY AN
`UNWARRANTED EXPANSION OF
`
`BETWEEN THE SECOND CIRCUIT AND
`THE STATE COURTS OF NEW YORK
`WILL HAVE A DESTRUCTIVE IMPACT
`
`Conflict Between The Second Circuit On
`The One Hand, And The New York State
`Courts And The U.S. Copyright Office, On
`
`
`
`

`

`iii
`
`The Importance Of Pre-1972 Sound
`Recordings To New York’s Music
`
`B. The Split Is Particularly Harmful Given
`Industry. ............................................................ 11
` THE DECISION BELOW UPENDS
`EXISTING COPYRIGHT LAW. ........................ 13
`A. The Second Circuit’s Decision Upends The
`Of Authorship. .................................................. 14
`B. The Second Circuit’s Decision Creates
`Recordings. ....................................................... 17
`CONCLUSION .............................................................. 20
`
`Long And Well-Established History Of
`Federalism And Dual, Non-Overlapping
`Federal And State Protection For Works
`
`Significant Uncertainty With Respect To
`The Applicability Of Other Provisions Of
`The Copyright Act To Pre-1972 Sound
`
`
`
`
`
`
`
`

`

`iv
`TABLE OF AUTHORITIES
`
`CASES
`Goldstein v. California, 412 U.S. 546 (1973) ............. 15
`Holmes v. Hurst, 174 U.S. 82 (1899) .......................... 14
`UMG Recordings, Inc. v. Escape Media
`Group, Inc., 107 A.D.3d 51 (1st Dep’t 2013) ...... 8, 9
`Victor Talking Machine Co. v. Armstrong, 132
`F. 711 (C.C.S.D.N.Y. 1904) .................................... 15
`CONSTITUTIONAL PROVISIONS AND STATUTES
`U.S. Const. art. I, § 8, cl. 8 ........................................... 14
`17 U.S.C. § 301(a) .......................................................... 16
`17 U.S.C. § 301(b) .......................................................... 16
`17 U.S.C. § 301(c) ...................................................... 3, 16
`17 U.S.C. § 303(a) .......................................................... 16
`17 U.S.C. § 501(a) .......................................................... 10
`17 U.S.C. § 512(c) ........................................................... 3
`Copyright Act of 1790, ch. 15, 1 Stat. 124 .................. 15
`Sonny Bono Copyright Term Extension Act,
`Pub L. No. 105-298, § 102(a), 112 Stat. 2827,
`2827 (1998) ............................................................... 16
`Sound Recording Amendment of 1971, Pub. L.
`No. 92-140, § 3, 85 Stat. 391, 392 ........................... 15
`LEGISLATIVE MATERIALS
`H.R. Rep. No. 94-1476 (1976), as reprinted in
`1976 U.S.C.C.A.N. 5679 ......................................... 15
`
`
`
`

`

`v
`
`OTHER AUTHORITIES
`Lois Gray & Maria Figueroa, Empire States’
`Cultural Capital at Risk? Assessing
`Challenges
`to
`the Workforce
`and
`Educational Infrastructure of Arts and
`Entertainment in New York, Cornell Univ.
`ILR Sch. (2009) ....................................................... 11
`Jillian Mapes, 20 Old Songs Wes Anderson
`Playlist,
`Gave
`New
`Life:
`A
`Flavorwire.com,
`http://flavorwire.com/443888/20-old-songs-
`wes-anderson-gave-new-life-a-playlist .................. 6
`Music First, Economic Impact of
`the
`Community in the State of New York (on
`file with amicus RIAA) ........................................ 11
`William F. Patry, Copyright Law and Practice
`(1994) ........................................................................ 14
`Press Release, RIAA, New York Is Music
`Coalition Applauds Passage of Empire
`State Music Production Tax Credit, Urges
`Governor Cuomo to Sign Bill Into Law
`(June 16, 2016), https://www.riaa.com/new-
`york-is-music-coalition-applauds-passage-
`of-empire-state-music-production-tax-
`credit-urges-governor-cuomo-to-sign-bill-
`into-law/ .................................................................... 11
`Rockband DB, rbdb.online
`(last visited
`January 12, 2017) ...................................................... 6
`
`
`
`

`

`vi
`U.S. Copyright Office, Federal Copyright
`Protection for Pre-1972 Sound Recordings
`(Dec. 2011) ...................................................... 8, 9, 10, 19
`
`
`
`

`

`1
`INTEREST OF THE AMICI CURIAE1
`Amici are the Recording Industry Association of
`America, Inc. (“RIAA”), the American Association of
`Independent Music Inc. (“A2IM”), and Concord Music
`Group, Inc. (“Concord”).
`The RIAA is a nonprofit trade organization that
`represents the major record companies in the United
`States.
` A2IM
`is a nonprofit trade organization
`representing a broad coalition of over 400 independently
`owned U.S. music labels. RIAA and A2IM’s members
`collectively create, manufacture, and/or distribute
`nearly 100% of all sound recordings
`legitimately
`produced and sold in the United States. Many of their
`members own sound recordings that were created
`before February 15, 1972 (“pre-1972 sound recordings”).
`RIAA and A2IM’s members depend on copyrights and
`state laws that safeguard property to protect the
`recorded music in which they have invested and created
`in collaboration with musicians, songwriters, and other
`artists.
`Concord is one of the largest independent recorded
`music companies in the United States. Concord owns
`
`1 Pursuant to Rule 37.6, counsel for amici curiae state that no
`counsel for a party authored this brief in whole or in part, and no
`counsel or party made a monetary contribution intended to fund the
`preparation or submission of this brief. No person or entity other
`than amici curiae, their members, or their counsel has made a
`monetary contribution to the preparation or submission of this
`brief. Pursuant to Rule 37.2, counsel for amici curiae state that
`counsel were retained fewer than 10 days prior to the filing of this
`brief and promptly gave notice to all parties, who consented to the
`filing of this brief.
`
`
`
`

`

`2
`approximately 27,000 pre-1972 sound recordings, which
`Concord believes to be more than any entity other than
`the major recorded music companies.
`As representatives of record companies that own and
`commercialize
`iconic and valuable pre-1972 sound
`recordings, as well as a record company that also
`commercializes many such recordings, amici have a
`significant interest in the question presented in this
`case, concerning the extent to which state laws continue
`to protect such recordings.
`
`
`
`
`
`

`

`3
`INTRODUCTION AND
`SUMMARY OF ARGUMENT
`The petition for a writ of certiorari thoroughly
`explains why the Second Circuit’s decision in this matter
`is as wrong as it is important: Although Section 301(c)
`of the Copyright Act unambiguously provides that
`federal copyright law does not “annul[] or limit[]” state-
`law “rights or remedies” for sound recordings fixed
`before February 15, 1972, 17 U.S.C. § 301(c), the Second
`Circuit held that the safe harbor in Section 512(c) of the
`Digital Millennium Copyright Act (“DMCA”), 17 U.S.C.
`§ 512(c), can shield internet service providers against
`state-law copyright liability in certain circumstances.
`The Second Circuit
`reached
`that
`conclusion
`notwithstanding that the DMCA says nothing about
`state-law rights and remedies
`in pre-1972 sound
`recordings, and despite the fact that Congress enacted
`the DMCA one day after it expressly extended by 20
`years the state-law supremacy codified in Section 301(c).
`In doing so, the Second Circuit—which mislabeled its
`ruling a “tiny” exception to section 301(c)—ignored this
`Court’s longstanding recognition of the supremacy of
`state law with respect to pre-1972 sound recordings, and
`created a conflict with the New York appellate courts
`and the United States Copyright Office.
`Although the Second Circuit’s decision is wrong for a
`number of reasons, amici focus here on the great harm
`the decision will inflict on the music industry. As the
`Second Circuit acknowledged, some of the most
`culturally significant songs ever recorded were fixed
`before February 15, 1972. Pet. App. 20a-21a. Those
`recordings remain an important source of income for the
`
`
`
`

`

`4
`owners and recording artists who hold rights in them, as
`well as their families. To date, state law has protected
`the valuable rights of these individuals and companies
`without interference from federal law, including the
`DMCA’s limitations on liability for federal copyrighted
`recordings. The decision below disrupts that status quo
`and threatens to claw back the rights these individuals
`and companies have under state law to protect their
`valuable intellectual property.
`The decision below also creates a stark division
`between the Second Circuit and New York’s appellate
`courts. As a result, the extent to which pre-1972 sound
`recordings are protected will depend on whether a suit
`is filed in the New York state courts, or a stone’s throw
`away at the federal courthouse. That is particularly
`problematic given New York’s central place in the
`recording industry, and the fact that a great many of the
`individuals who rely on pre-1972 sound recordings for
`their livelihoods reside in New York State.
`But the damage done by the Second Circuit’s opinion
`is not limited to these harms. The decision also upends
`the law on which the music industry has come to rely,
`making it difficult to predict where the line between
`federal and state control over pre-1972 sound recordings
`falls. By reading the DMCA as creating, sub silentio, an
`exception to section 301(c)’s plain statement that state
`law protects pre-1972 sound recordings, the Second
`Circuit’s decision calls into question the centuries-long
`understanding that copyright law pays significant heed
`to federalism. Moreover, the Second Circuit’s textual
`analysis—which hinged on the fact that section 512(c)
`addresses “infringement of copyright” without using the
`
`
`
`

`

`5
`specific words “under this title”—raises far more
`questions than it answers about which rights and
`remedies will be governed by federal law, and which will
`be governed by state law, in future cases. This
`uncertainty is precisely what Congress meant to avoid
`in enacting—and reenacting—section 301(c)’s plain
`statement that state law controls the rights and
`remedies respecting pre-1972 sound recordings.
`For all of these reasons, as well as those given in the
`petition for a writ of certiorari, the petition should be
`granted.
`
`
`
`ARGUMENT
`PRE-1972 SOUND RECORDINGS REMAIN
`CULTURALLY AND ECONOMICALLY
`SIGNIFICANT AND THEIR STATE-LAW
`PROTECTIONS SHOULD NOT BE
`UNDERMINED BY AN UNWARRANTED
`EXPANSION OF FEDERAL LAW.
`As the Second Circuit acknowledged, “[s]ome 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.” Pet. App. 20a-21a. That
`list merely scratches the surface: pre-1972 sound
`recordings also include recordings by The Jackson 5 and
`The Beach Boys (whose sound recordings, along with
`those of The Beatles and many others, were featured in
`videos on Vimeo’s website, see Pet. App. 110a), as well
`as jazz recordings by Duke Ellington and Billie Holiday,
`folk and folk-rock recordings by Woody Guthrie and
`Simon & Garfunkel, rock recordings by The Velvet
`
`
`
`

`

`6
`Underground, and pop recordings by The Drifters,
`Carole King, Neil Diamond, and Bob Dylan, among
`countless others. These recordings remain highly
`relevant and commercially popular today. Indeed, a
`large percentage of today’s best-selling recordings are
`compilations or re-issues of pre-1972 sound recordings
`that still have great appeal to younger music fans and
`connoisseurs alike.
`Of course, music fans are not the only contributors to
`the popularity of pre-1972 sound recordings; other media
`keep the recording artists of the era alive in the public’s
`consciousness. From critically acclaimed and award
`winning “biopics” of musicians, such as Ray (Ray
`Charles) and Walk the Line (Johnny Cash), to television
`shows like Mad Men, which referenced musical icons
`such as Chubby Checker and David Bowie to mark the
`passage of time, pre-1972 sound recordings remain at the
`forefront of public consciousness and popular culture.
`So too, new generations of audiences have been
`introduced to pre-1972 sound recordings through film
`soundtracks like those for Wes Anderson’s movies,
`which “often highlight[] gems from the ‘60s and ‘70s,”
`Jillian Mapes, 20 Old Songs Wes Anderson Gave New
`Playlist,
`Flavorwire.com,
`Life:
`A
`http://flavorwire.com/443888/20-old-songs-wes-
`anderson-gave-new-life-a-playlist, and video games like
`the popular Rock Band series, which exposed a
`generation of young “gamers” to pre-1972 classics like
`Creedence Clearwater Revival’s “Fortunate Son,” The
`Who’s “Baba O’Riley,” and The Jimi Hendrix
`Experience’s “Purple Haze.”
` See Rockband DB,
`rbdb.online (last visited January 12, 2017). Far from
`
`
`
`

`

`7
`fading into history, pre-1972 works remain a popular,
`vibrant, and essential part of American culture.
`Precisely because pre-1972 sound recordings remain
`so popular, amici’s members routinely invest substantial
`sums to acquire, promote, and market these recordings.
`For example, RIAA members’ catalog divisions have
`hundreds of employees engaged in a full range of music
`label activities, including reissuing older albums, re-
`mastering pre-1972 sound recordings, and producing box
`sets and special occasion releases. The RIAA’s members
`regularly license these pre-1972 sound recordings for a
`variety of uses, such as sampling and inclusion in movies,
`television, and video games, as well as commercials and
`third-party compilations.
`Not only are pre-1972 sound recordings continuously
`in use today, they generate significant revenue. Prior to
`the Second Circuit’s decision in this case, the owners and
`recording artists with rights in those recordings (as well
`as their families) could rely on state law to protect their
`rights and revenue streams, confident in the knowledge
`that, because of section 301(c), the federal Copyright Act
`did not undermine those rights. By holding that the
`limitations in section 512(c) apply to pre-1972 sound
`recordings, the decision below turns this status quo on
`its head.
`
`
`
`

`

`
`
`8
`SPLIT
`IRRECONCILABLE
`THE
`BETWEEN THE SECOND CIRCUIT AND
`THE STATE COURTS OF NEW YORK
`WILL HAVE A DESTRUCTIVE IMPACT
`ON THE MUSIC INDUSTRY.
`The Second Circuit’s decision creates a stark split of
`authority with the New York State appellate courts and
`the U.S. Copyright Office. For no good reason, the
`rights of the owners of pre-1972 sound recordings will
`vary based on the particular courthouse in which suit is
`filed. That is all the more problematic because New
`York is a major hub of the music industry, and will
`remain a frequent site of litigation over pre-1972 sound
`recordings.
`A. The Decision Below Creates A Direct Conflict
`Between The Second Circuit On The One
`Hand, And The New York State Courts And
`The U.S. Copyright Office, On The Other.
`As the petition explains (Pet. 17-20), the decision
`below is in direct conflict with the governing law in the
`New York Appellate Division, First Department, as well
`as with the Copyright Office’s analysis in its 2011 report
`on pre-1972 sound recordings. See generally U.S.
`Copyright Office, Federal Copyright Protection for Pre-
`1972 Sound Recordings 130-32 (Dec. 2011) (“Copyright
`Office Report”).
`In UMG Recordings, Inc. v. Escape Media Group,
`Inc., 107 A.D.3d 51 (1st Dep’t 2013), the First
`Department considered whether the safe harbor in
`section 512(c) of the DMCA applies to pre-1972 sound
`recordings—the very same question presented here.
`
`
`
`

`

`9
`The First Department held that it does not. Pointing to
`section 301(c), the court explained that “Congress
`explicitly, and very clearly, separated the universe of
`sound recordings into two categories, one for works
`‘fixed’ after February 15, 1972, to which it granted
`federal copyright protection, and one for those fixed
`before that date, to which it did not.” 107 A.D.3d at 58.
`The court held that the DMCA’s safe harbors do not
`apply to the latter category of works because nothing in
`the statute or its legislative history suggests that
`Congress meant to roll back this federal-state division.
`“To the contrary,” the court held, “reading the
`Copyright Act as a whole,” the DMCA’s references to
`“copyright” or “copyright infringers” “pertain[] only to
`those works covered by the DMCA,” i.e., sound
`recordings fixed after February 15, 1972. Id. at 58-59
`(citation omitted). The Court emphasized that “in the
`same Congressional session it enacted the DMCA
`(indeed one day before), Congress amended section
`301(c) of the Copyright Act to extend for an additional
`20 years the amount of time before the Act could be used
`to ‘annul’ or ‘limit’ the rights inherent in pre-1972
`recordings.” Id. at 59. Congress was plainly aware of
`the preexisting division between federal and state
`control over copyrights. Had Congress intended to alter
`the status quo this radically, it would have done so
`expressly.
`The Copyright Office reached the same result in its
`2011 report. See generally Copyright Office Report at
`130-32. In addition to relying on section 301(c)’s clear
`statement of state-law supremacy, the Copyright Office
`emphasized that the safe harbor in section 512(c) uses
`
`
`
`

`

`10
`the term “infringement of copyright.” Id. at 131-32.
`Section 501(a), in turn, defines the nearly identical
`phrase “infringer of copyright” as “[a]nyone who
`violates any of the exclusive rights of the copyright
`owner as provided by sections 106 through 122” of the
`federal statute. 17 U.S.C. § 501(a). In this way, the
`Copyright Office—like the First Department—read
`section 512(c) in harmony with other provisions of the
`Copyright Act, and concluded that the DMCA’s safe
`harbor does not affect liability for infringement of pre-
`1972 sound recordings.
`Instead of reading the Copyright Act as a whole, as
`the First Department and Copyright Office had done,
`the Second Circuit focused on the phrase “infringement
`of copyright” in isolation. It determined that, because
`the phrase was not paired with the words “under this
`title,” Congress must have intended to provide a defense
`to all copyright infringement claims, whether under
`federal or state law, Pet. App. 18a-20a, notwithstanding
`the clear statement in section 301(c) that federal law
`cannot “annul or limit” state-law rights in pre-1972
`works, and the federal-law definition of “infringer of
`copyright” in section 501(a). Thus, the Second Circuit’s
`decision “insulate[s] service providers from liability for
`infringements [of pre-1972 works] of which they are
`unaware” under the safe harbor, Pet. App. 5a, while
`depriving the owners of pre-1972 sound recordings of
`the heightened benefits available to federal copyright
`owners under the DMCA and the Copyright Act more
`generally. See Pet. 21-22.
`The Second Circuit’s erroneous decision creates a
`direct split with the state courts of New York and the
`
`
`
`

`

`11
`U.S. Copyright Office. If not overturned, the extent of
`protection for rights in pre-1972 sound recordings will
`depend on whether a suit filed in New York proceeds in
`federal or state court. That would be an untenable result
`in any jurisdiction, but is especially troubling in light of
`New York’s position as a major hub of the music
`industry.
`B. The Split Is Particularly Harmful Given The
`Importance Of Pre-1972 Sound Recordings To
`New York’s Music Industry.
`New York is a leading center for the arts and
`entertainment industries in the United States and
`globally. Today, New Yorkers who work in the music
`industry as local musicians, performers, managers, and
`at music labels, account for nearly 10% of the nation’s
`music professionals, and over 3,600
`local music
`businesses make New York their home. See Music First,
`Economic Impact of the Community in the State of New
`York (on file with amicus RIAA). New York is the top
`sound recording center in the country, and numerous
`music labels are incorporated or have significant offices
`in New York. See Lois Gray & Maria Figueroa, Empire
`States’ Cultural Capital at Risk? Assessing Challenges
`to the Workforce and Educational Infrastructure of
`Arts and Entertainment in New York, Cornell Univ.
`ILR Sch. 6 (2009). All told, more than 100,000 New
`Yorkers work in the music industry. See Press Release,
`RIAA, New York Is Music Coalition Applauds Passage
`of Empire State Music Production Tax Credit, Urges
`Governor Cuomo to Sign Bill Into Law (June 16, 2016),
`https://www.riaa.com/new-york-is-music-coalition-
`
`
`
`

`

`12
`applauds-passage-of-empire-state-music-production-
`tax-credit-urges-governor-cuomo-to-sign-bill-into-law/.
`New York’s status as a major hub of the music
`industry is nothing new: From the music of “Tin Pan
`Alley” at the end of the nineteenth century, through the
`jazz clubs of the 1920s and 1930s, and the evolution of
`salsa, mambo, Latin jazz, and folk in the 1930s through
`1960s, New York has consistently been a major center of
`music and sound recordings. Indeed, in the decades
`immediately preceding Congress’s decision to protect
`sound recordings in 1971, Manhattan was home to many
`in the pop music industry, resulting in the “Brill Building
`Sound” that produced such hits as The Drifters’ “Save
`the Last Dance for Me” (1956), Neil Sedaka’s “Breaking
`Up is Hard to Do” (1962), Little Eva’s “The Loco-
`Motion” (1962), and The Shirelles’ “Will You Love Me
`Tomorrow (1960). So too, both Bob Dylan and Simon &
`Garfunkel began their recording careers in New York,
`producing many canonical pre-1972 sound recordings.
`New York today remains home to many of the best-
`known recording artists of the pre-1972 era, who rely on
`the royalties earned from exploitation of their work. For
`example, pre-1972 recording artists who call New York
`home include such musical entertainment legends as
`George Benson and Liza Minnelli, as well as such diverse
`artists as rock and rollers Garth Hudson (The Band),
`Gary Lewis (Gary Lewis & The Playboys), and Domingo
`“Sam” Samudio (“Wooly Bully”), pop crooner Kay Starr
`(“Wheel of Fortune”), R&B hit-maker Lloyd Price
`(“Personality,” “Lawdy Miss Clawdy”), and jazz greats
`Lou Donaldson and Hugh Masekela.
`
`
`
`

`

`13
`Given New York’s important ties to pre-1972 sound
`recordings, the artists who performed on them, and the
`companies that created or acquired them, it is likely that
`when rightsholders seek to protect their rights in pre-
`1972 sound recordings, they will file suit in New York
`State. Unless this Court intervenes, the extent to which
`their rights will be protected will depend on whether the
`case is brought in (or perhaps, removed or remanded to)
`federal or state court. That situation is untenable. It
`produces
`significant uncertainty
`for
`the many
`individuals and companies who rely on income derived
`from pre-1972 sound recordings, and it encourages
`procedural gamesmanship and forum shopping among
`New York’s state and federal courts. Moreover, given
`that the Second Circuit’s decisions are influential in
`other jurisdictions—including those that recognize
`rights in pre-1972 sound recordings—other courts may
`adopt the Second Circuit’s flawed reasoning, further
`threatening the livelihoods of musicians and other
`rightsholders who depend on earnings from pre-1972
`sound recordings.
` THE DECISION BELOW UPENDS
`EXISTING COPYRIGHT LAW.
`The deleterious effects of the Second Circuit’s
`decision go beyond the untenable situation of having one
`rule control at 60 Centre Street (home of the New York
`Supreme Court, New York County) and another govern
`around the corner at 500 Pearl Street (the Southern
`District of New York’s Daniel Patrick Moynihan United
`States Courthouse). The Second Circuit’s decision
`disturbs decades of copyright law, which has long
`embraced federalism and, for more than 45 years,
`
`
`
`

`

`14
`expressly recognized that rights in pre-1972 sound
`recordings are governed exclusively by state law. The
`Second Circuit’s decision also creates significant
`uncertainty with respect to other parts of the Copyright
`Act, as it contains no limiting principle that would
`prevent courts from interpreting other provisions of the
`Copyright Act to apply to pre-1972 sound recordings.
`This is not what Congress intended.
`A. The Second Circuit’s Decision Upends The
`Long And Well-Established History Of
`Federalism And Dual, Non-Overlapping
`Federal And State Protection For Works Of
`Authorship.
`Throughout its history, U.S. copyright law has paid
`due respect to federalism. That policy is expressly
`embodied in section 301(c) of the Copyright Act, which
`makes clear that federal copyright law should not and
`does not affect pre-1972 sound recordings. By holding
`that the DMCA safe harbor sub silentio created an
`exception to section 301(c), the Second Circuit’s decision
`upends copyright
`law’s
`longstanding respect
`for
`federalism and carves a significant and unintended hole
`in section 301(c)’s mandate.
`From the beginning of the nation, common law
`protected against copying unpublished works. Holmes
`v. Hurst, 174 U.S. 82, 84-85 (1899). By the time of the
`Constitution, 12 of the 13 states had also enacted
`copyright statutes. William F. Patry, Copyright Law
`and Practice 20 (1994).
`The Constitution empowered Congress to enact a
`copyright law, U.S. Const. art. I, § 8, cl. 8, which it
`
`
`
`

`

`15
`quickly did. Copyright Act of 1790, ch. 15, 1 Stat. 124.
`But Congress’s copyright power was not exclusive; to
`the contrary, the States maintained the “power to grant
`copyrights,” at least where Congress had neither done
`so nor indicated its intent to “eschew all protection.”
`Goldstein v. California, 412 U.S. 546, 558–59 (1973).
`Accordingly, a dual system of state and federal
`protection developed and has persisted over time.
`Even after sound recordings became commercially
`important, they were not among the works protected by
`the federal Copyright Act. See generally Pet. 8. State
`law stepped in to fill this void, using copyright and other
`legal rights to protect sound recordings (along with
`other works of authorship). Id.; see also, e.g., Victor
`Talking Mach. Co. v. Armstrong, 132 F. 711
`(C.C.S.D.N.Y. 1904).
`When Congress extended federal law to protect
`sound recordings, it made the deliberate choice to apply
`the federal statute only to recordings fixed on or after
`February 15, 1972. Federal protection specifically did
`not “affect[] in any way any rights with respect to sound
`recordings fixed before the effective date of this Act.”
`Sound Recording Amendment of 1971, Pub. L. No. 92-
`140, § 3, 85 Stat. 391, 392. Given Congress’s decision not
`to “alter the legal relationships which govern” pre-1972
`sound recordings, this Court in Goldstein upheld the
`validity of state-law protections for such recordings. 412
`U.S. at 552, 571.
`The federal Copyright Act of 1976 effected a
`“fundamental and significant change” by
`largely
`federalizing copyright law. H.R. Rep. No. 94-1476, at
`129 (1976), as reprinted in 1976 U.S.C.C.A.N. 5679, 5745.
`
`
`
`

`

`16
`Congress expressed this change in clear statutory
`provisions. See, e.g., 17 U.S.C. §§ 301(a), 301(b), 303(a).
`However, Congress chose to leave pre-1972 sound
`recordings to the exclusive province of state law,
`preserving the dual system in that instance. 17 U.S.C.
`§ 301(c). Congress could not have been clearer that
`“rights or remedies under the common law or statutes of
`any State shall not be annulled or limited” by the federal
`Act. Id. Two decades later—and just one day before it
`enacted the DMCA—Congress reaffirmed its decision to
`leave pre-1972 sound recordings subject to state law,
`extending by twenty years the exclusive period of state-
`law protection under section 301(c). Sonny Bono
`Copyright Term Extension Act, Pub L. No. 105-298,
`§ 102(a), 112 Stat. 2827, 2827 (1998).
`In holding that, despite this history, the DMCA’s
`safe harbors apply to pre-1972 sound recordings, the
`Second Circuit’s decision fundamentally misconstrues
`Congress’s intent. It ignores the fact that dual, non-
`overlapping systems of state and federal protection have
`been at the foundation of U.S. copyright law for more
`than two centuries; that Congress has used clear
`statements when it has sought to change the federal-
`state balance; and that Congress has repeatedly and
`unambiguously expressed its determination that pre-
`1972 sound recordings remain subject to state law only,
`including the day before it adopted Section 512. As
`against all this, the Second Circuit’s conclusion—that, by
`failing to use the phrase “in this title” in Section 512,
`Congress abrogated two centuries of federalism in
`copyright—is a thoroughly
`implausible reading of
`congressional intent and, as discussed below, one that
`
`
`
`

`

`17
`creates significant uncertainty regarding the scope of
`other provisions of the Copyright Act.
`B. The Second Circuit’s Decision Creates
`Significant Uncertainty With Respect To The
`Applicability Of Other Provisions Of The
`Copyright Act To Pre-1972 Sound Recordings.
`The Second Circuit’s decision suggests that, despite
`section 301(c)’s plain statement that pre-1972 sound
`recordings are the province of state law, the Second
`Circuit (and other courts following its lead) may find that
`various other provisions of the federal Copyright Act
`apply to those works.
`The current Copyright Act continues a two-century
`tradition of referring
`to “copyright” with
`the
`understanding that such references refer to federal
`copyright, not state protections. Because section 301(c)
`unambiguously confirms
`that
`federal and state
`regulation are
`independent and non-overlapping,
`numerous provisions of the federal Act, including section
`512,
`refer
`to
`“copyright” without
`spec

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