ISPs Receive DMCA Safe Harbor Protection for Pre-1972 Sound Recordings

Capitol Records and other sound recording copyright owners sued Vimeo for copyright infringement, alleging Digital Millennium Copyright Act (DMCA) violations.  Vimeo is an Internet service provider that allows members to post videos the members create, which the general public can view.  The copyright owners alleged that some of the member-created videos included copyrighted content without authorization from the copyright owners.  The interlocutory appeal from the district court presented three issues to the Second Circuit Court of Appeals.

(i) whether the DMCA §512(c) safe harbor applies to pre-1972 sound recordings.  This is a different issue than copyright owners’ rights under state copyright law for pre-1972 sound recordings.

(ii) whether evidence of some viewing by Vimeo employees of videos that played all or virtually all of ‘recognizable’ copyrighted songs was sufficient to satisfy the standard of red flag knowledge, which would make Vimeo ineligible for the DMCA safe harbor; and

(iii) whether Plaintiffs have shown that Vimeo had a general policy of willful blindness to infringement of sound recordings, which would justify imputing to Vimeo knowledge of the specific infringements.

The Second Circuit affirmed the district court’s rulings in part and vacated in part.  The Second Circuit ruled that the DMCA safe harbor, a federal statute, protects service providers from infringement liability for pre-1972 sound recordings, which are covered by state law.  Secondly, the Second Circuit ruled that some viewing by a service provider’s employee of a video that plays all or virtually all of a recognizable copyrighted song does not disqualify the service provider from safe harbor protection.  Thirdly, the Second Circuit ruled that the copyright owners did not show a policy of willful blindness by Vimeo that would have disqualified Vimeo from safe harbor protection.

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De Minimis Horn Hits Blow Away Copyright Infringement Claim

Pop star Madonna and Shep Pettibone recorded and released the mega-hit dance song Vogue in the early 1990s.  Pettibone recorded the song Love Break in the early 1980s.  VMG Salsoul LLC claims ownership of both the sound recording and musical composition copyrights for Love Break.  VMG sued Madonna, Pettibone, and others, for copyright infringement, claiming that Pettibone “sampled” (physically copied the actual sounds) of horn hits (horn chords) from Love Break in creating Vogue.

Ruling that the horn hits were not original under copyright law and, alternatively, that any horn hit sampling was de minimis, the district court granted summary judgment in favor of Madonna and Pettibone.  The Ninth Circuit held that the de minimis exception to copyright infringement actions applies to all copyright infringement actions, including sound recordings.  In a previous case, Newton v. Diamond, the Ninth Circuit held that the de minimis exception applied to musical composition infringement claims, but did not decide the sound recording question, since that question was not part of that case.  The Ninth Circuit reversed the district court’s award of attorney’s fees to the defendants for abuse of discretion.

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Known Copyright Registration Inaccuracies Can Hurt Later

I’m going to ignore blog post best practices and start out with a statute:


(1) A certificate of registration satisfies the requirements of this section and section 412, regardless of whether the certificate contains any inaccurate information, unless—

(A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and

(B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.

(2) In any case in which inaccurate information described under paragraph (1) is alleged, the court shall request the Register of Copyrights to advise the court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.

17 U.S.C. §412(b).

Palmer/Kane sued Rosen Book Works for copyright infringement.  The district court granted Rosen’s motion for the district court to request the Copyright Office to advise the court on whether the Copyright Office would have refused registration if it knew that certain information included in the registration application was inaccurate.  Rosen argued that Palmer/Kane’s predecessor knowingly misrepresented to the Copyright Office that the photographs it applied to register as an unpublished collection had not been previously published.

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Farewell, Big Dog

We said goodbye to our Big Dog Shy in late January 2016.  We were lucky enough to adopt Shy as a rescue dog in July 2010.  Our 9-year-old male Vizsla, Flash, died prematurely from cancer.  I looked at all of the Vizsla rescue websites on the West Coast, hoping to find an adoptable dog the same age as Flash.  I found Shy on the Utah Idaho Vizsla Rescue website.

Friends of ours from Eastern Washington fostered Shy at the time.  When they came to Western Washington from their home in Ephrata for a dog show, we arranged to take Shy for a weekend trial – and ended up keeping him from then on.  Surprise, surprise.

Shy was very loving and wanted nothing more than to cuddle up with you on the couch.  He was also extremely anxious.  Shy’s previous owners apparently put him out in the back yard and didn’t let him back in the house.  When Shy first came to live with us, it was difficult to coax him off of his bed to go outside.  It was also a challenge to get him to drink enough water.  Eventually, he learned that if he went outside to pee, he could usually come right back in, especially in bad weather.  

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No Such Thing as Unintentionally Giving Up a Copyright Termination Right

Albert Brumley wrote the gospel song, “I’ll Fly Away,” in the late 1920’s.  The music publishing company he sold his song to registered the copyright in 1932.  Albert later purchased the music publishing company that bought his song, regaining ownership of the song.  Albert’s sons, Robert and William, became the owners of both the copyright to the song and the music publishing company by buying the company from Albert and his wife, Goldie, in 1975.  Albert died in 1977.  In May 1979, Goldie signed an agreement assigning all rights to obtain renewals of works composed by Albert to Brumley & Sons.  Robert bought out William’s interest in the company and became the sole owner in 1986.  Goldie died in 1988.

Robert’s four other siblings (excluding William) served Robert with a copyright grant termination notice in 2008.  The siblings later filed a lawsuit against Robert and Brumley & Sons to obtain a declaration that their termination notice was effective.  Robert argued that Goldie relinquished any terminating rights by making the 1979 assignment to Robert and William.  The district court ruled in the siblings’ favor on the termination right.  On appeal, the case was returned to the district court for a new trial on the work made for hire issue.  The district court again ruled in the siblings’ favor on the termination issue.  The Sixth Circuit Court of Appeals affirmed.  The work made for hire question was not an issue in the second appeal.

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Circuit Split on Video Privacy Protection for Smart Device Free App Users

Alexander Yershov sued Gannett, owner of USA Today, for Video Privacy Protection Act (VPPA) violations.  Yershov alleged that the USA Today Mobile App he downloaded and installed on his Android device collected and sent his personally identifiable information (PII) to Adobe, a third party, without Yershov’s consent.

The district court ruled that Gannett disclosed Yershov’s PII to Adobe, but that Yershov was not a consumer protected by the VPPA.  The First Circuit Court of Appeals held that Gannett distributed Yershov’s PII and that Yershov was a consumer under the VPPA, reversing the district court’s dismissal of the complaint.  There is now a circuit split on this issue.  My post Users of Free Video Apps Can Forget About Video Privacy Protection discusses the Eleventh Circuit’s ruling that the smartphone video app user was not entitled to VPPA protection.

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Independent Contractor Content Providers Ruled DMCA Safe Harbor Users

BWP Media owns the rights to a number of celebrity photographs.  BWP sued Clarity Digital Group (n/k/a/ AXS) for copyright infringement when 75 of BWP’s photos appeared without BWP’s permission on, a website owned by AXS.  AXS argued it was protected from liability by the Digital Millennium Copyright Act (DMCA) safe harbor.  The district court agreed and granted AXS’s motion for summary judgement.  The Tenth Circuit affirmed.

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Contract Defenses Argument Can’t Bypass Expired Statutes of Limitation

Drug manufacturer Amylin Pharmaceuticals hired Consumer Health to develop materials to help Amylin more successfully market its diabetes drug, Byetta.  Although Consumer Health began its work in December 2005, the parties signed a contract in March 2006.  The contract assigned to Amylin the copyright in the materials Consumer Health created.  Amylin stopped paying Consumer Health for work after September 30, 2006, but continued to use the materials Consumer Health created. 

Consumer Health sued Amylin for copyright infringement in July 2013.  The district court ruled that Consumer Health filed its lawsuit too late under both the four-year California statute of limitations applying to contract rescission and the three-year copyright statute of limitations and dismissed the suit.  The Seventh Circuit Court of Appeals affirmed the district court’s ruling that Consumer Health’s suit was filed more than four years too late.

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Copyright Preregistration Another Piece of the Registration Puzzle

I recently attended a Continuing Legal Education (CLE) seminar in which the presenter asserted that copyright owners who register their works within one month after the infringement occurs can still get attorney’s fees and statutory damages in litigation.  That assertion perplexed me, so I looked at the statute afterwards.  Perplexed, because, for the copyright owner to receive attorney’s fees and statutory damages, the statute requires that the work be registered either before the infringement occurs or within 3 months after the first publication.

Section 412 of the Copyright Act of 1976 indicates that statutory damages and attorney’s fees may be available for copyright owners of preregistered works when the registration occurs one month after the owner learns of the infringement. 

…an action for infringement of the copyright of a work that has been preregistered under section 408(f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement…

17 U.S.C. §412.

The one month window applies only if the work is a) preregistered and b) the one month period occurs before 3 months after the first publication.

This leads to two questions:  1) What is preregistration? and 2) What is publication?

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Can Peter Rabbit Save Mickey Mouse?

Mickey Mouse first appeared in Disney’s Steamboat Willie cartoon in 1928.  Under the Copyright Act of 1976, Disney’s copyright on Steamboat Willie was set to expire at the end of 2003, 75 years from the publication date.  In 1998, Congress passed the Sonny Bono Copyright Term Extension Act to extend copyright terms another 20 years.  The Sonny Bono Copyright Term Extension Act has also been called the Mickey Mouse Act.  Under current law, the Steamboat Willie copyright is set expire and the work to go into the public domain at the end of 2023.

In Dastar Corp. v. Twentieth Century Fox Film Corp., the U.S. Supreme Court refused to let Fox Film use trademark law to reclaim its expired copyright from the public domain. 

Once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution. Thus, in construing the Lanham Act, we have been careful to caution against misuse or over-extension of trademark and related protections into areas traditionally occupied by patent or copyright.  The Lanham Act, we have said, does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity.  Federal trademark law has no necessary relation to invention or discovery, but rather, by preventing competitors from copying a source-identifying mark, reduces the customer’s costs of shopping and making purchasing decisions, and helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.  Assuming for the sake of argument that Dastar’s representation of itself as the ‘Producer’ of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under § 43(a) for that representation would create a species of mutant copyright law that limits the public’s federal right to ‘copy and to use, expired copyrights.

Will the Dastar ruling prevent Disney from using trademark law to protect Mickey Mouse?  In her recent CSUSA presentation in Seattle, Washington, Columbia Law School Professor Jane C. Ginsburg argued that Dastar did not answer the question of whether a cartoon character whose copyright has expired can be protected by a trademark.

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