Pryor Cashman obtained a substantial appellate victory in a case that will greatly assist songwriters, music publishers, and the music industry as a whole in protecting their valuable copyrights from willful infringers who build a business by deliberately turning a blind eye to copyright infringement and fail to boot repeat infringers from their services. The decision underscores that music has tremendous value and must be protected from unauthorized use in all formats and media. 

EMI's Copyright Infringement Suit 

In a lengthy decision by Judge Raymond Lohier issued on October 25, 2016, the U.S. Court of Appeals for the Second Circuit addressed numerous aspects of infringement claims EMI has litigated since 2007 against defendants Michael Robertson and his now-bankrupt online music company MP3tunes, LLC, which operated the file-storing and sharing websites MP3tunes.com and sideload.com. 

The Second Circuit's Ruling on the DMCA's Safe Harbor Provisions

Significantly, the Second Circuit held that the district court erred in concluding that MP3tunes had reasonably implemented a policy to terminate users who repeatedly infringed copyrights by posting links to songs on sideload.com, and therefore vacated its summary judgment decision that MP3tunes was entitled to the “safe harbor” provisions of the Digital Millennium Copyright Act (“DMCA”). The DMCA safe harbor provisions limit a service provider’s liability for infringing conduct engaged in by third parties using an Internet service.

The Second Circuit reasoned that because copyright infringement is a strict liability claim, the district court’s distinction between the intent of users who repeatedly uploaded infringing material from their own computers and users who repeatedly linked to or downloaded infringing material found “no support in the text, structure or legislative history of the DMCA.” Adopting EMI’s position, the court concluded that “all it takes to be a ‘repeat infringer’ is to repeatedly upload or download copyrighted material for personal use.” Because plaintiffs had offered evidence on summary judgment that MP3tunes and Robertson did not make any efforts to connect known infringing activity to users who repeatedly created links to or copied pirated content, and that Robertson and other MP3tunes executives were themselves repeat infringers, the Second Circuit remanded the issue. 

Reinstating EMI's $42 Million Jury Verdict

Following the district court’s 2011 decision on summary judgment, EMI pursued its infringement claims in a four week jury trial in early 2014 resulting in a $42 million verdict for copyright infringement against Robertson and MP3tunes. The district court subsequently reduced the judgment to $12 million, nullifying the jury’s finding that Robertson and MP3tunes had sufficient knowledge of piracy for liability with respect to certain broad categories of songs on sideload.com, including songs downloaded in MP3 format before January 2007 and songs by the Beatles. 

Reinstating the jury’s $42 million verdict, the Second Circuit explained that the jury’s finding that Robertson and MP3tunes knew that these works were not authorized for download was reasonable and therefore MP3tunes was not entitled to a DMCA safe harbor. The Second Circuit held that although under the DMCA MP3tunes had no duty to affirmatively monitor its websites for pirated content, once it had obtained “red flag” knowledge of such content it had an obligation to remove it. The Second Circuit also held that plaintiffs did not need to show awareness of unauthorized content with respect to each work for liability. Rather, evidence of Robertson’s general knowledge that major labels had not offered songs in MP3 format until 2007 and that songs by the Beatles were not legally distributed online prior to 2010 was sufficient.

The Second Circuit’s decision also addressed other important aspects of copyright law including statutory damages where a sound recording and underlying composition are separately owned, liability for automated display of album cover art, damages for individual songs that were also marketed within albums, Robertson’s secondary liability for MP3tunes’ and its employees’ conduct, as well as the district court’s exercise of personal jurisdiction over Robertson as a California resident and the CEO and owner of MP3tunes, LLC.

This lawsuit drew considerable attention from media outlets including Law360, The Am Law Litigation Daily and Reuters, among others. The case is EMI Christian Music Group, Inc. v. MP3tunes, LLC, No. 14-4369 (2d Cir. 2016).

The Pryor Cashman Team

EMI Music Publishing was represented by Partner Frank Scibilia, Co-Chair of Pryor Cashman’s Digital Media Practice Group, Partner Mona Simonian and Associate Ross Bagley, all members of the firm’s Litigation, Intellectual Property, and Media & Entertainment Groups.