07-1480-cv (L)The Cartoon Network LP, LLLP v. CSC Holdings, Inc.

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UNITED STATES COURT OF APPEALS

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FOR THE SECOND CIRCUIT

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August Term 2007
(Argued: October 24, 2007

Decided: August 4, 2008)

6Docket Nos. 07-1480-cv(L) & 07-1511-cv(CON)7-----------------------------------------------------x

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THE CARTOON NETWORK LP, LLLP and CABLE NEWS NETWORK
L.P., L.L.L.P.,
Plaintiffs-Counter-Claimants-DefendantsAppellees,
TWENTIETH CENTURY FOX FILM CORPORATION, UNIVERSALCITY STUDIOS PRODUCTIONS LLLP, PARAMOUNT PICTURESCORPORATION, DISNEY ENTERPRISES INC., CBS
BROADCASTING INC., AMERICAN BROADCASTING COMPANIES,
INC., NBC STUDIOS, INC.,
Plaintiffs-Counter-Defendants-Appellees,-- v. -CSC HOLDINGS, INC. and CABLEVISION SYSTEMSCORPORATION,
Defendants-Counterclaim-Plaintiffs-ThirdParty Plaintiffs-Appellants,-- v. -TURNER BROADCASTING SYSTEM, INC., CABLE NEWS NETWORK
LP, LLP, TURNER NETWORK SALES, INC., TURNER CLASSIC
MOVIES, L.P., LLLP, TURNER NETWORK TELEVISION LP,
LLLP
Third-Party-Defendants-Appellees.
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B e f o r e :WALKER, SACK, and LIVINGSTON, Circuit Judges.

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Appeal from an entry of summary judgment in the United

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States District Court for the Southern District of New York

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(Denny Chin, Judge).

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Corporation argues that the district court erred in holding that7

its proposed “Remote Storage” Digital Video Recorder system8violates the Copyright Act by infringing plaintiffs’ exclusive

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rights of reproduction and public performance.

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Defendant-Appellant Cablevision Systems

REVERSED, VACATED, and REMANDED.
JEFFREY A. LAMKEN (Robert K. Kry
and Joshua A. Klein, on the brief),
Baker Botts L.L.P., Washington,
D.C., and Timothy A. Macht (on thebrief), New York, N.Y., forDefendants-Appellants.
KATHERINE B. FORREST (Antony L.
Ryan, on the brief), Cravath,
Swaine & Moore LLP, New York, N.Y.,
for Plaintiffs-Appellees The
Cartoon Network LP, LLLP, et al.
ROBERT ALAN GARRETT (Hadrian R.
Katz, Jon Michaels, Peter L.
Zimroth, and Eleanor Lackman, on
the brief), Arnold & Porter LLP,
Washington, D.C., for PlaintiffsAppellees Twentieth Century Fox
Film Corporation, et al.
Marc E. Isserles, Cohen & Gresser
LLP, New York, N.Y., for Amici
Curiae Law Professors.
Henry A. Lanman, Trachtenberg Rodes& Friedberg LLP, New York, N.Y.,
for Amicus Curiae Professor Timothy
Wu.

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Solveig Singleton, The Progress &Freedom Foundation, Washington,
D.C., for Amicus Curiae Progress &Freedom Foundation.
Carol A. Witschel, White & Case
LLP, New York, N.Y. and Richard H.
Reimer, New York, N.Y., for Amicus
Curiae The American Society ofComposers, Authors & Publishers.
Michael E. Salzman, Hughes Hubbard& Reed LLP, New York, N.Y., andMarvin Berenson, Broadcast Music
Inc., New York, N.Y., for Amicus
Curiae Broadcast Music, Inc.
David Sohn, Center for Democracy &Technology, Washington, D.C., Fredvon Lohman, Electronic Freedom
Foundation, San Francisco, Cal.,
Sherwin Siy, Public Knowledge,
Washington D.C., William P.
Heaston, Broadband Service
Providers Association Regulatory
Committee, Jonathan Band PLLC,
Washington, D.C., Julie Kearney,
Consumer Electronics Association,
Arlington, Va., Michael F. Altschul
et al., CTIA–The Wireless
Association®, Washington, D.C.,
Jonathan Banks, USTelecom,
Washington, D.C., Michael K.
Kellogg et al., Kellogg, Huber,
Hansen, Todd, Evans & Figel,
P.L.L.C., Washington D.C., for
Amici Curiae Center for Democracy &Technology et al.
Donald B. Verrilli, Jr., et al.,Jenner & Block LLP, Washington,
D.C., Kenneth L. Doroshow & Scott
A. Zebrak, Recording Industry
Association of America, Washington,
D.C., Jacqueline C. Charlesworth,
National Music Publishers’
Association, Washington, D.C.,
Victor S. Perlman, American Societyof Media Photographers, Inc.,
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Philadelphia, Pa., Allan Robert
Adler, Association of American
Publishers, Washington, D.C., Linda
Steinman, Davis Wright Tremaine
LLP, New York, N.Y., David
Korduner, Directors Guild of
America, Inc., Los Angeles, Cal.,
Frederic Hirsch & Chun T. Wright,
Entertainment Software Association,
Washington, D.C., Susan Cleary,
Independent Film & Television
Alliance, Los Angeles, Cal., Gary
Gertzog, National Football League,
New York, N.Y., Thomas Ostertag,
Office of the Commissioner of
Baseball, New York, N.Y., Duncan
Crabtree-Ireland, Screen Actors
Guild, Inc., Los Angeles, Cal.,John C. Beiter, Loeb & Loeb, LLP,
Nashville, Tenn., Anthony R.
Segall, Writers Guild of America,
West, Inc., Los Angeles, Cal., for
Amici Curiae American Society ofMedia Photographers, Inc. et al.
Steven J. Metalitz & J. Matthew
Williams, Washington, D.C., for
Amicus Curiae Americans for Tax
Reform.

JOHN M. WALKER, JR., Circuit Judge:

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Defendant-Appellant Cablevision Systems Corporation

35(“Cablevision”) wants to market a new “Remote Storage” Digital

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Video Recorder system (“RS-DVR”), using a technology akin to both37

traditional, set-top digital video recorders, like TiVo (“DVRs”),

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and the video-on-demand (“VOD”) services provided by many cable

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companies.

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television programs that they provide to Cablevision pursuant to41

numerous licensing agreements.

Plaintiffs-Appellees produce copyrighted movies andThey contend that Cablevision,-4-

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through the operation of its RS-DVR system as proposed, would

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directly infringe their copyrights both by making unauthorized3

reproductions, and by engaging in public performances, of their4

copyrighted works.

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Because we conclude that Cablevision would not directly infringe

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plaintiffs’ rights under the Copyright Act by offering its RS-DVR

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system to consumers, we reverse the district court’s award of

8summary judgment to plaintiffs, and we vacate its injunction

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against Cablevision.

The material facts are not in dispute.

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BACKGROUND

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Today’s television viewers increasingly use digital video

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recorders (“DVRs”) instead of video cassette recorders (“VCRs”)

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to record television programs and play them back later at their14

convenience.

15

internal hard drive rather than a cassette.

16demonstrates, the generic term “DVR” actually refers to a growing

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number of different devices and systems.

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sell a stand-alone DVR device that is typically connected to a19

user’s cable box and television much like a VCR.

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companies also lease to their subscribers “set-top storage DVRs,”

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which combine many of the functions of a standard cable box and a22

stand-alone DVR in a single device.

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DVRs generally store recorded programming on an
But, as this caseCompanies like TiVo

Many cable

In March 2006, Cablevision, an operator of cable television24

systems, announced the advent of its new “Remote Storage DVR

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System.”As designed, the RS-DVR allows Cablevision customers-5-

1

who do not have a stand-alone DVR to record cable programming on

2

central hard drives housed and maintained by Cablevision at a3

“remote” location.

4

those programs through their home television sets, using only a5

remote control and a standard cable box equipped with the RS-DVR

6

software.

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plaintiffs, of its plans to offer RS-DVR, but it did not seek any

8license from them to operate or sell the RS-DVR.

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RS-DVR customers may then receive playback of

Cablevision notified its content providers, including

Plaintiffs, which hold the copyrights to numerous movies and10

television programs, sued Cablevision for declaratory and11

injunctive relief.

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operation of the RS-DVR would directly infringe their exclusive

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rights to both reproduce and publicly perform their copyrighted

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works.

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theories only of direct infringement, not contributory

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infringement, and defendants waived any defense based on fair

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use.

They alleged that Cablevision’s proposed

Critically for our analysis here, plaintiffs alleged

18

Ultimately, the United States District Court for the

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Southern District of New York (Denny Chin, Judge), awarded

20summary judgment to the plaintiffs and enjoined Cablevision from

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operating the RS-DVR system without licenses from its content

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providers.

23

Sys. Corp. (Cablevision I), 478 F. Supp. 2d 607 (S.D.N.Y. 2007).

24

At the outset, we think it helpful to an understanding of our25

decision to describe, in greater detail, both the RS-DVR and the26

district court’s opinion.

See Twentieth Century Fox Film Corp. v. Cablevision

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I.

Operation of the RS-DVR System

2

Cable companies like Cablevision aggregate television3

programming from a wide variety of “content providers”–the4various broadcast and cable channels that produce or provide

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individual programs–and transmit those programs into the homes of6

their subscribers via coaxial cable.

7transmission process, Cablevision gathers the content of the

8various television channels into a single stream of data.

9

Generally, this stream is processed and transmitted to10

Cablevision’s customers in real time.

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program is scheduled to air Monday night at 8pm, Cartoon Network

12transmits that program’s data to Cablevision and other cable

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companies nationwide at that time, and the cable companies

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immediately re-transmit the data to customers who subscribe to15

that channel.

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At the outset of theThus, if a Cartoon Network

Under the new RS-DVR, this single stream of data is split

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into two streams.

The first is routed immediately to customers

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as before.

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Broadband Media Router (“BMR”), id. at 613, which buffers the20

data stream, reformats it, and sends it to the “Arroyo Server,”21

which consists, in relevant part, of two data buffers and a

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number of high-capacity hard disks.

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moves to the first buffer (the “primary ingest buffer”), at which

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point the server automatically inquires as to whether any

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customers want to record any of that programming.

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has requested a particular program, the data for that program

The second stream flows into a device called the-7-

The entire stream of data

If a customer

1

move from the primary buffer into a secondary buffer, and then2

onto a portion of one of the hard disks allocated to that3

customer.

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overwrite a corresponding quantity of data already on the buffer.

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The primary ingest buffer holds no more than 0.1 seconds of each6

channel’s programming at any moment.

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second, the data residing on this buffer are automatically erased

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and replaced.

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seconds of programming at any time.

10other points in the operation of the RS-DVR, only the BMR buffer11

and the primary ingest buffer are utilized absent any request

12from an individual subscriber.

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As new data flow into the primary buffer, theyThus, every tenth of a

The data buffer in the BMR holds no more than 1.2
While buffering occurs at

As the district court observed, “the RS-DVR is not a single

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piece of equipment,” but rather “a complex system requiring

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numerous computers, processes, networks of cables, and facilities

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staffed by personnel twenty-four hours a day and seven days a

17week.”

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recording and playback on the RS-DVR are similar to that of a19

standard set-top DVR.

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record programming by selecting a program in advance from an on-

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screen guide, or by pressing the record button while viewing a22given program.

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portion of a program once it has begun.

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customer selects the show from an on-screen list of previously

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recorded programs.

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in operation is that, instead of sending signals from the remote

Id. at 612.

To the customer, however, the processes ofUsing a remote control, the customer can

A customer cannot, however, record the earlier

See id. at 614-16.

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To begin playback, theThe principal difference

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to an on-set box, the viewer sends signals from the remote,2

through the cable, to the Arroyo Server at Cablevision’s central

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facility.

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resembles a VOD service, whereby a cable subscriber uses his

5remote and cable box to request transmission of content, such as

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a movie, stored on computers at the cable company’s facility.

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Id. at 612.

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content that they previously requested to be recorded.

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See id.

In this respect, RS-DVR more closely

But unlike a VOD service, RS-DVR users can only play

Cablevision has some control over the content available for10

recording: a customer can only record programs on the channels

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offered by Cablevision (assuming he subscribes to them).

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Cablevision can also modify the system to limit the number of

13channels available and considered doing so during development of

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the RS-DVR.

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II.

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Id. at 613.

The District Court’s Decision
In the district court, plaintiffs successfully argued that

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Cablevision’s proposed system would directly infringe their18

copyrights in three ways.

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primary ingest buffer and other data buffers integral to the

20function of the RS-DVR, Cablevision would make copies of21

protected works and thereby directly infringe plaintiffs’

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exclusive right of reproduction under the Copyright Act.

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by copying programs onto the Arroyo Server hard disks (the24“playback copies”), Cablevision would again directly infringe the25

reproduction right.

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Arroyo Server hard disks to its RS-DVR customers in response to a

First, by briefly storing data in theSecond,And third, by transmitting the data from the

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“playback” request, Cablevision would directly infringe

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plaintiffs’ exclusive right of public performance.

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617.

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awarded summary declaratory judgment to plaintiffs and enjoined

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Cablevision from operating the RS–DVR system without obtaining

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licenses from the plaintiff copyright holders.

See id. atAgreeing with all three arguments, the district court

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As to the buffer data, the district court rejected8

defendants’ arguments 1) that the data were not “fixed” and9

therefore were not “copies” as defined in the Copyright Act, and

102) that any buffer copying was de minimis because the buffers

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stored only small amounts of data for very short periods of time.

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In rejecting the latter argument, the district court noted that13

the “aggregate effect of the buffering” was to reproduce the14

entirety of Cablevision’s programming, and such copying “can15

hardly be called de minimis.”

16

Id. at 621.

On the issue of whether creation of the playback copies made17

Cablevision liable for direct infringement, the parties and the18

district court agreed that the dispositive question was “who19

makes the copies”?

20“unfettered discretion” over the content available for recording,21

its ownership and maintenance of the RS-DVR components, and its

22“continuing relationship” with its RS-DVR customers, the district

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court concluded that “the copying of programming to the RS-DVR’s

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Arroyo servers . . . would be done not by the customer but by

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Cablevision, albeit at the customer’s request.”

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621.

Id. at 617.

Emphasizing Cablevision’s-10-

Id. at 618, 620,

1Finally, as to the public performance right, Cablevision2

conceded that, during the playback, “the streaming of recorded3

programming in response to a customer’s request is a4

performance.”

5

the work was performed not by Cablevision, but by the customer,

6

an argument the district court rejected “for the same reasons

7that [it] reject[ed] the argument that the customer is ‘doing’

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the copying involved in the RS-DVR.”

9argued that such a playback transmission was not “to the public,”

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and therefore not a public performance as defined in the11

Copyright Act, because it “emanates from a distinct copy of a

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program uniquely associated with one customer’s set-top box and

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intended for that customer’s exclusive viewing in his or her

14home.”

15“Cablevision would transmit the same program to members of the16

public, who may receive the performance at different times,

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depending on whether they view the program in real time or at a18

later time as an RS-DVR playback.”

19

The district court also relied on a case from the Northern20

District of California, On Command Video Corp. v. Columbia

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Pictures Industries, 777 F. Supp. 787 (N.D. Cal. 1991), which

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held that when the relationship between the transmitter and the23

audience of a performance is commercial, the transmission is “to24

the public,” see Cablevision I, 478 F. Supp. 2d at 623 (citing On

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Command, 777 F. Supp. at 790).

Id.

Id. at 622.

Cablevision contended, however, that

Id.

Cablevision also

The district court disagreed, noting that-11-

Id. at 623 (emphasis added).

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Finding that the operation of the RS-DVR would infringe

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plaintiffs’ copyrights, the district court awarded summary3

judgment to plaintiffs and enjoined Cablevision from copying or

4publicly performing plaintiffs’ copyrighted works “in connection

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with its proposed RS-DVR system,” unless it obtained the6necessary licenses.

7

Cablevision appealed.

Cablevision I, 478 F. Supp. 2d at 624.

DISCUSSION

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We review a district court’s grant of summary judgment de

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novo.

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605, 607 (2d Cir. 2006).

12

Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d

“Section 106 of the Copyright Act grants copyright holders a13bundle of exclusive rights. . . .”Id. at 607-08.

This case14

implicates two of those rights: the right “to reproduce the15

copyrighted work in copies,” and the right “to perform the16

copyrighted work publicly.”

17

discussed above, the district court found that Cablevision18

infringed the first right by 1) buffering the data from its

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programming stream and 2) copying content onto the Arroyo Server

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hard disks to enable playback of a program requested by an RS-DVR

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customer.

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would infringe the public performance right by transmitting a

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program to an RS-DVR customer in response to that customer’s

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playback request.

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infringing acts in turn.

17 U.S.C. § 106(1), (4).

As

In addition, the district court found that Cablevision

We address each of these three allegedly

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I.

The Buffer Data
It is undisputed that Cablevision, not any customer or other3

entity, takes the content from one stream of programming, after4

the split, and stores it, one small piece at a time, in the BMR

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buffer and the primary ingest buffer.

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information is buffered before any customer requests a recording,7

and would be buffered even if no such request were made.

8question is whether, by buffering the data that make up a given

9

work, Cablevision “reproduce[s]” that work “in copies,” 17 U.S.C.

10§ 106(1), and thereby infringes the copyright holder’s11

reproduction right.

As a result, the

The

12

“Copies,” as defined in the Copyright Act, “are material

13

objects . . . in which a work is fixed by any method . . . and14

from which the work can be . . . reproduced.”

15

Act also provides that a work is “‘fixed’ in a tangible medium of

16

expression when its embodiment . . . is sufficiently permanent or

17stable to permit it to be . . . reproduced . . . for a period of18

more than transitory duration.”

19

believe that this language plainly imposes two distinct but

20

related requirements: the work must be embodied in a medium,

21

i.e., placed in a medium such that it can be perceived,

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reproduced, etc., from that medium (the “embodiment23

requirement”), and it must remain thus embodied “for a period of

24

more than transitory duration” (the “duration requirement”).

25

2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright §Id. § 101.

Id. (emphasis added).

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The

We

See

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8.02[B][3], at 8-32 (2007).

2

the work is not “fixed” in the buffer, and, as a result, the3buffer data is not a “copy” of the original work whose data is

4

buffered.

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Unless both requirements are met,

The district court mistakenly limited its analysis primarily

6to the embodiment requirement.

7

it determined that the buffer data was “[c]learly . . . capable

8of being reproduced,” i.e., that the work was embodied in the9buffer, the district court concluded that the work was therefore

10“fixed” in the buffer, and that a copy had thus been made.

11

Cablevision I, 478 F. Supp. 2d at 621-22.

12

on a line of cases beginning with MAI Systems Corp. v. Peak

13

Computer Inc., 991 F.2d 511 (9th Cir. 1993).

14

the United States Copyright Office’s 2001 report on the Digital

15

Millennium Copyright Act, which states, in essence, that an

16

embodiment is fixed “[u]nless a reproduction manifests itself so

17

fleetingly that it cannot be copied.”

18

DMCA Section 104 Report 111 (Aug. 2001) (“DMCA Report”) (emphasis

19

added), available at20

http://www.copyright.gov/reports/studies/dmca/sec-104-report-vol-21

1.pdf.

22

As a result of this error, once

In doing so, it relied

It also relied on

U.S. Copyright Office,The district court’s reliance on cases like MAI Systems is23

misplaced.

In general, those cases conclude that an alleged copy

24

is fixed without addressing the duration requirement; it does not

25

follow, however, that those cases assume, much less establish,
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that such a requirement does not exist.

2

requirement, by itself, was not at issue in MAI Systems and its

3progeny.

4

before us here: If a work is only “embodied” in a medium for a5

period of transitory duration, can it be “fixed” in that medium,6

and thus a copy?

7transitory duration”?

8

Indeed, the duration

As a result, they do not speak to the issues squarely

And what constitutes a period “of more thanIn MAI Systems, defendant Peak Computer, Inc., performed

9

maintenance and repairs on computers made and sold by MAI

10

Systems.

11

employee had to operate the computer and run the computer’s

12

copyrighted operating system software.

13

513.

14

software into the computer’s RAM,1 the repairman created a “copy”

15

as defined in § 101.

16

issue turned on whether the software’s embodiment in the17

computer’s RAM was “fixed,” within the meaning of the same18

section.

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In order to service a customer’s computer, a PeakSee MAI Sys., 991 F.2d at

The issue in MAI Systems was whether, by loading the

See id. at 517.

The resolution of thisThe Ninth Circuit concluded thatby showing that Peak loads the software into the RAM and isthen able to view the system error log and diagnose theproblem with the computer, MAI has adequately shown that the
representation created in the RAM is “sufficiently permanentor stable to permit it to be perceived, reproduced, orotherwise communicated for a period of more than transitory
duration.”1

To run a computer program, the data representing that
program must be transferred from a data storage medium (such as a
floppy disk or a hard drive) to a form of Random Access Memory(“RAM”) where the data can be processed. The data buffers at
issue here are also a form of RAM.
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Id. at 518 (quoting 17 U.S.C. § 101).
The MAI Systems court referenced the “transitory duration”

5

language but did not discuss or analyze it.

6that the defendants “vigorously” argued that the program’s

7

embodiment in the RAM was not a copy, but it does not specify the8arguments defendants made.

9that the parties did not litigate the significance of the10“transitory duration” language, and the court therefore had no11

occasion to address it.

12fair to assume that in these cases the program was embodied in

13

the RAM for at least several minutes.

Id. at 517.

The opinion notes

This omission suggests

This is unsurprising, because it seems

14

Accordingly, we construe MAI Systems and its progeny as

15

holding that loading a program into a computer’s RAM can result

16

in copying that program.

17

that, as a matter of law, loading a program into a form of RAM

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always results in copying.

19“transitory duration” language out of the definition, and we do20

not believe our sister circuit would dismiss this statutory

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language without even discussing it.

22

MAI Systems simply did not dispute that the duration requirement

23

was satisfied; this line of cases simply concludes that when a24

program is loaded into RAM, the embodiment requirement is

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satisfied–an important holding in itself, and one we see no

We do not read MAI Systems as holding

Such a holding would read the-16-

It appears the parties in1reason to quibble with here.2

2

At least one court, relying on MAI Systems in a highly3

similar factual setting, has made this point explicitly.

In

4

Advanced Computer Services of Michigan, Inc. v. MAI Systems

5

Corp., the district court expressly noted that the unlicensed

6

user in that case ran copyrighted diagnostic software “for7

minutes or longer,” but that the program’s embodiment in the8computer’s RAM might be too ephemeral to be fixed if the computer9

had been shut down “within seconds or fractions of a second”

10

after loading the copyrighted program.

11(E.D. Va. 1994).

12

merely makes explicit the reasoning that is implicit in the other13

MAI Systems cases.

14

for the conclusion that the definition of “fixed” does not

15

include a duration requirement.

16507, 511 (1924) (“Questions which merely lurk in the record,

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845 F. Supp. 356, 363

We have no quarrel with this reasoning; it

Accordingly, those cases provide no support

See Webster v. Fall, 266 U.S.

The same reasoning also distinguishes this court’s opinion
in Matthew Bender & Co. v. West Publishing Co., 158 F.3d 693 (2dCir. 1998). Language in that opinion, taken out of context,
suggests that the definition of “fixed” imposes only anembodiment requirement: “Under § 101’s definition of ‘copies,’ awork satisfies the fixation requirement when it is fixed in amaterial object from which it can be perceived or communicateddirectly or with the aid of a machine.” Id. at 702. Like the
MAI Systems cases, Matthew Bender only addresses the embodimentrequirement: specifically, whether West’s copyrighted arrangementof judicial opinions was “embedded” in a CD-ROM compilation of
opinions when the cases were normally arranged differently but
could be manipulated by the user to replicate West’s copyrighted
arrangement. Id. at 703. The opinion merely quotes the duration
language without discussing it, see id. at 702; that casetherefore does not compel us to conclude that the definition of“fixed” does not impose a duration requirement.
-17-

1

neither brought to the attention of the court nor ruled upon, are2

not to be considered as having been so decided as to constitute3

precedents.”).

4

Nor does the Copyright Office’s 2001 DMCA Report, also5

relied on by the district court in this case, explicitly suggest

6

that the definition of “fixed” does not contain a duration

7

requirement.

8

embodiment is fixed “[u]nless a reproduction manifests itself so

9fleetingly that it cannot be copied, perceived or communicated.”

10

DMCA Report, supra, at 111.

11

whether a work is “fixed” in a given medium, the statutory

12

language directs us to ask not only 1) whether a work is

13“embodied” in that medium, but also 2) whether it is embodied in14

the medium “for a period of more than transitory duration.”

15

According to the Copyright Office, if the work is capable of16

being copied from that medium for any amount of time, the answer

17

to both questions is “yes.”18

is that it reads the “transitory duration” language out of the19

statute.

However, as noted above, it does suggest that an

As we have stated, to determine

The problem with this interpretation

20

We assume, as the parties do, that the Copyright Office’s

21

pronouncement deserves only Skidmore deference, deference based22

on its “power to persuade.”

23

134, 140 (1944).

24

not explain why Congress would include language in a definition

25

if it intended courts to ignore that language, we are not

Skidmore v. Swift & Co., 323 U.S.

And because the Office’s interpretation does

-18-

1
2

persuaded.
In sum, no case law or other authority dissuades us from3

concluding that the definition of “fixed” imposes both an

4

embodiment requirement and a duration requirement.

5Group Inc. v. LoopNet, Inc., 373 F.3d 544, 551 (4th Cir. 2004)

6(while temporary reproductions “may be made in this transmission

7

process, they would appear not to be ‘fixed’ in the sense that8

they are ‘of more than transitory duration’”).

9whether, in this case, those requirements are met by the buffer

10

data.

11

Accord CoStar

We now turn toCablevision does not seriously dispute that copyrighted

12

works are “embodied” in the buffer.

Data in the BMR buffer can

13

be reformatted and transmitted to the other components of the RS-

14

DVR system.

15

the Arroyo hard disks if a user has requested a recording of that

16

data.

17

sufficiently permanent or stable to permit it to be perceived,

18

reproduced,” (as in the case of the ingest buffer) “or otherwise

19

communicated” (as in the BMR buffer).

20

result might be different if only a single second of a much

21

longer work was placed in the buffer in isolation.

22

situation, it might be reasonable to conclude that only a23minuscule portion of a work, rather than “a work” was embodied in24

the buffer.

25

is placed, one second at a time, in the buffer, we conclude that

Data in the primary ingest buffer can be copied onto

Thus, a work’s “embodiment” in either buffer “is

17 U.S.C. § 101.

The

In such aHere, however, where every second of an entire work

-19-

1
2

the work is embodied in the buffer.
Does any such embodiment last “for a period of more than3transitory duration”?

Id.

No bit of data remains in any buffer4

for more than a fleeting 1.2 seconds.

5

cases like MAI Systems, which remained embodied in the computer’s

6

RAM memory until the user turned the computer off, each bit of7

data here is rapidly and automatically overwritten as soon as it8

is processed.

9

and other factors not present here may alter the duration

10

analysis significantly, these facts strongly suggest that the11works in this case are embodied in the buffer for only a12“transitory” period, thus failing the duration requirement.

13

Against this evidence, plaintiffs argue only that the14

duration is not transitory because the data persist “long enough15

for Cablevision to make reproductions from them.”

16

Appellees the Cartoon Network et al. at 51.

17

above, however, this reasoning impermissibly reads the duration

18

language out of the statute, and we reject it.

19

data reside in no buffer for more than 1.2 seconds before being

20

automatically overwritten, and in the absence of compelling21

arguments to the contrary, we believe that the copyrighted works

22

here are not “embodied” in the buffers for a period of more than23

transitory duration, and are therefore not “fixed” in the24

buffers.

25

the RS-DVR do not create copies, as the Copyright Act defines

And unlike the data inWhile our inquiry is necessarily fact-specific,

Br. of Pls.-

As we have explained

Given that the

Accordingly, the acts of buffering in the operation of

-20-

1

that term.

2

for us to determine whether any copies produced by buffering data

3

would be de minimis, and we express no opinion on that question.

4

II.

5

Our resolution of this issue renders it unnecessary

Direct Liability for Creating the Playback Copies
In most copyright disputes, the allegedly infringing act and6

the identity of the infringer are never in doubt.

7

turn on whether the conduct in question does, in fact, infringe

8

the plaintiff’s copyright.

9

the dispute is over the authorship of the infringing conduct.

10

After an RS-DVR subscriber selects a program to record, and that11

program airs, a copy of the program–a copyrighted work–resides on

12

the hard disks of Cablevision’s Arroyo Server, its creation

13

unauthorized by the copyright holder.

14

this copy.

15

infringement succeeds; if it is the customer, plaintiffs’ theory

16

fails because Cablevision would then face, at most, secondary

17

liability, a theory of liability expressly disavowed by18

plaintiffs.

19

These cases

In this case, however, the core of

The question is who madeIf it is Cablevision, plaintiffs’ theory of direct

Few cases examine the line between direct and contributory

20

liability.

Both parties cite a line of cases beginning with

21

Religious Technology Center v. Netcom On-Line Communications

22

Services, 907 F. Supp. 1361 (N.D. Cal. 1995).

23

third-party customer of the defendant Internet service provider

24(“ISP”) posted a copyrighted work that was automatically25

reproduced by the defendant’s computer.
-21-

In Netcom, a

The district court

1refused to impose direct liability on the ISP, reasoning that2“[a]lthough copyright is a strict liability statute, there should

3

still be some element of volition or causation which is lacking

4

where a defendant’s system is merely used to create a copy by a5

third party.”

6

endorsed the Netcom decision, noting that

Id. at 1370.

Recently, the Fourth Circuit

7
8
9
10
11
12
13
14
15

to establish direct liability under . . . the Act, something
more must be shown than mere ownership of a machine used byothers to make illegal copies. There must be actual
infringing conduct with a nexus sufficiently close andcausal to the illegal copying that one could conclude thatthe machine owner himself trespassed on the exclusive domainof the copyright owner.”
CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 550 (4th Cir.

162004).

17

Here, the district court pigeon-holed the conclusions

18

reached in Netcom and its progeny as “premised on the unique

19

attributes of the Internet.”

20

620.

21

of direct liability that would effectively “hold the entire

22Internet liable” for the conduct of a single user, 907 F. Supp.

23

at 1372, its reasoning and conclusions, consistent with24

precedents of this court and the Supreme Court, and with the text

25of the Copyright Act, transcend the Internet.

26

Circuit, we reject the contention that “the Netcom decision was27

driven by expedience and that its holding is inconsistent with28

the established law of copyright,” CoStar, 373 F.3d at 549, and29

we find it “a particularly rational interpretation of § 106,” id.

Cablevision I, 478 F. Supp. 2d atWhile the Netcom court was plainly concerned with a theory-22-

Like the Fourth

1

at 551, rather than a special-purpose rule applicable only to

2

ISPs.

3

When there is a dispute as to the author of an allegedly

4

infringing instance of reproduction, Netcom and its progeny

5

direct our attention to the volitional conduct that causes the6

copy to be made.

7

conduct in this case: Cablevision’s conduct in designing,

8

housing, and maintaining a system that exists only to produce a9

copy, and a customer’s conduct in ordering that system to produce

10

a copy of a specific program.

11

clear–and we know of no case holding otherwise–that the operator

12of the VCR, the person who actually presses the button to make13

the recording, supplies the necessary element of volition, not14

the person who manufactures, maintains, or, if distinct from the15

operator, owns the machine.

16

customer is sufficiently distinguishable from a VCR user to17

impose liability as a direct infringer on a different party for18

copies that are made automatically upon that customer’s command.

19

The district court emphasized the fact that copying is20“instrumental” rather than “incidental” to the function of the

21

RS-DVR system.

22

that may distinguish the RS-DVR from the ISPs in Netcom and23

CoStar, it does not distinguish the RS-DVR from a VCR, a24photocopier, or even a typical copy shop.

25

seem to contest that a company that merely makes photocopiers

There are only two instances of volitional

In the case of a VCR, it seems

We do not believe that an RS-DVR

Cablevision I, 478 F. Supp. 2d at 620.

-23-

While

And the parties do not1available to the public on its premises, without more, is not2

subject to liability for direct infringement for reproductions

3

made by customers using those copiers.

4

Cablevision is similarly situated to such a proprietor.

5

They only dispute whether

The district court found Cablevision analogous to a copy

6

shop that makes course packs for college professors.

7

leading case involving such a shop, for example, “[t]he professor

8[gave] the copyshop the materials of which the coursepack [was]9

to be made up, and the copyshop [did] the rest.”

10

Press v. Mich. Document Servs., 99 F.3d 1381, 1384 (6th Cir.

111996) (en banc).

12in that case that the shop itself was directly liable for13

reproducing copyrighted works.

14that Cablevision, like this copy shop, would be “doing” the15

copying, albeit “at the customer’s behest.”

16

F. Supp. 2d at 620.

17

In thePrinceton Univ.

There did not appear to be any serious dispute

The district court here foundCablevision I, 478

But because volitional conduct is an important element of18

direct liability, the district court’s analogy is flawed.

19

determining who actually “makes” a copy, a significant difference

20

exists between making a request to a human employee, who then21

volitionally operates the copying system to make the copy, and22

issuing a command directly to a system, which automatically obeys

23

commands and engages in no volitional conduct.

24

Princeton University Press, the defendants operated a copying

25

device and sold the product they made using that device.

-24-

In

In cases likeSee 99

1

F.3d at 1383 (“The corporate defendant . . . is a commercial

2

copyshop that reproduced substantial segments of copyrighted

3

works of scholarship, bound the copies into ‘coursepacks,’ and4sold the coursepacks to students . . . .”).

5

access to a system that automatically produces copies on command,

6

Cablevision more closely resembles a store proprietor who charges

7

customers to use a photocopier on his premises, and it seems

8

incorrect to say, without more, that such a proprietor “makes”

9

any copies when his machines are actually operated by his

10customers.

11

held to the contrary, but they do not explicitly explain why, and12

we find them unpersuasive.

13

Elec. Distribs., Inc., 360 F. Supp. 821, 823 (E.D.N.Y. 1973)14(concluding that, “regardless” of whether customers or15

defendants’ employees operated the tape-copying machines at

16

defendants’ stores, defendant had actively infringed copyrights).

17

The district court also emphasized Cablevision’s “unfettered

See Netcom, 907 F. Supp. at 1369.

Here, by sellingSome courts have

See, e.g., Elektra Records Co. v. Gem

18

discretion in selecting the programming that it would make19

available for recording.”

20

This conduct is indeed more proximate to the creation of illegal

21

copying than, say, operating an ISP or opening a copy shop, where22

all copied content was supplied by the customers themselves or23

other third parties.

24

sufficiently proximate to the copying to displace the customer as

25

the person who “makes” the copies when determining liability

Cablevision I, 478 F. Supp. 2d at 620.

Nonetheless, we do not think it

-25-

1

under the Copyright Act.

Cablevision, we note, also has

2

subscribers who use home VCRs or DVRs (like TiVo), and has

3significant control over the content recorded by these customers.

4

But this control is limited to the channels of programming

5

available to a customer and not to the programs themselves.

6

Cablevision has no control over what programs are made available

7

on individual channels or when those programs will air, if at

8

all.

9

over recordable content than it does in the VOD context, where it

10

actively selects and makes available beforehand the individual

11

programs available for viewing.

12

inclined to say that Cablevision, rather than the user, “does”

13

the copying produced by the RS-DVR system.

14

that the district court erred in concluding that Cablevision,

15

rather than its RS-DVR customers, makes the copies carried out by

16

the RS-DVR system.

In this respect, Cablevision possesses far less control

For these reasons, we are not

As a result, we find17

Our refusal to find Cablevision directly liable on these18

facts is buttressed by the existence and contours of the Supreme

19

Court’s doctrine of contributory liability in the copyright20

context.

21

doctrine is to identify the actor (or actors) whose “conduct has

22been so significant and important a cause that [he or she] should

23

be legally responsible.”24

Keeton on Torts § 42, at 273 (5th ed. 1984).

25

extent that we may construe the boundaries of direct liability

After all, the purpose of any causation-based liability

W. Page Keeton et al., Prosser and-26-

But here, to the1more narrowly, the doctrine of contributory liability stands

2

ready to provide adequate protection to copyrighted works.

3

Most of the facts found dispositive by the district4

court–e.g., Cablevision’s “continuing relationship” with its RS-

5

DVR customers, its control over recordable content, and the6“instrumental[ity]” of copying to the RS-DVR system, Cablevision

7

I, 478 F. Supp. 2d at 618-20–seem to us more relevant to the8question of contributory liability.

9

Universal City Studios, Inc., the lack of an “ongoing10

relationship” between Sony and its VCR customers supported the11

Court’s conclusion that it should not impose contributory

12

liability on Sony for any infringing copying done by Sony VCR

13

owners.

14“just” to impose liability on a party in a “position to control”

15

the infringing uses of another, but as a contributory, not16

direct, infringer.

17

copyrighted material is only “incidental” to a given technology

18

is akin to asking whether that technology has “commercially19

significant noninfringing uses,” another inquiry the Sony Court

20

found relevant to whether imposing contributory liability was

21

just.

22

464 U.S. 417, 437-38 (1984).

In Sony Corp. of America v.

Id. at 437.

The Sony Court did deem it

And asking whether copying

Id. at 442.

The Supreme Court’s desire to maintain a meaningful

23

distinction between direct and contributory copyright24

infringement is consistent with congressional intent.

25

Act, unlike the Copyright Act, expressly provides that someone-27-

The Patent

1

who “actively induces infringement of a patent” is “liable as an2

infringer,” 35 U.S.C. § 271(b), just like someone who commits the3

underlying infringing act by “us[ing]” a patented invention

4

without authorization, id. § 271(a).

5merely “sells . . . a material or apparatus for use in practicing

6

a patented process” faces only liability as a “contributory

7

infringer.”8

direct liability to both the person who actually commits a9

copyright-infringing act and any person who actively induces that10

infringement, the Patent Act tells us that it knew how to draft a11

statute that would have this effect.

12

so, the Sony Court concluded that “[t]he Copyright Act does not

13

expressly render anyone liable for infringement committed by

14another.”

15

Supreme Court has strongly signaled its intent to use the16

doctrine of contributory infringement, not direct infringement,

17

to “identify[] the circumstances in which it is just to hold one

18

individual accountable for the actions of another.”19

Thus, although Sony warns us that “the lines between direct20

infringement, contributory infringement, and vicarious liability

21

are not clearly drawn,” id. at 435 n.17 (internal quotation marks

22and citation omitted), that decision does not absolve us of our23

duty to discern where that line falls in cases, like this one,

24

that require us to decide the question.

25

Id. § 271(c).

464 U.S. at 434.

In contrast, someone who

If Congress had meant to assign

Because Congress did not do

Furthermore, in cases like Sony, theId. at 435.

The district court apparently concluded that Cablevision’s

-28-

1

operation of the RS-DVR system would contribute in such a major

2

way to the copying done by another that it made sense to say that3

Cablevision was a direct infringer, and thus, in effect, was4“doing” the relevant copying.

5

not binding on us, that follow this approach.

6Enters. v. Russ Hardenburgh, Inc., 982 F. Supp. 503, 513 (N.D.

7

Ohio 1997) (noting that defendant ISP’s encouragement of its

8users to copy protected files was “crucial” to finding that it9

was a direct infringer).

10

contribution to the creation of an infringing copy may be so

11

great that it warrants holding that party directly liable for the12

infringement, even though another party has actually made the

13

copy.

14

produced by the RS-DVR system are “made” by the RS-DVR customer,

15

and Cablevision’s contribution to this reproduction by providing

16

the system does not warrant the imposition of direct liability.

17

Therefore, Cablevision is entitled to summary judgment on this18

point, and the district court erred in awarding summary judgment

19

to plaintiffs.

20

III. Transmission of RS-DVR Playback

There are certainly other cases,
See, e.g., Playboy

We need not decide today whether one’s

We conclude only that on the facts of this case, copies

21

Plaintiffs’ final theory is that Cablevision will violate

22

the Copyright Act by engaging in unauthorized public performances

23of their works through the playback of the RS-DVR copies.

24

Act grants a copyright owner the exclusive right, “in the case of25. . . motion pictures and other audiovisual works, to perform the
-29-

The

1

copyrighted work publicly.”2

the definitional section of the Act, explains that

3
4
5
6
7
8
9
10
11
12
13
14
15
16
17

17 U.S.C. § 106(4).

Section 101,[t]o perform or display a work “publicly” means (1) toperform or display it at a place open to the public or atany place where a substantial number of persons outside of anormal circle of a family and its social acquaintances isgathered; or (2) to transmit or otherwise communicate aperformance or display of the work to a place specified byclause (1) or to the public, by means of any device orprocess, whether the members of the public capable ofreceiving the performance or display receive it in the sameplace or in separate places and at the same time or atdifferent times.
Id. § 101.
The parties agree that this case does not implicate clause

18

(1).

Accordingly, we ask whether these facts satisfy the second,

19“transmit clause” of the public performance definition: Does

20

Cablevision “transmit . . . a performance . . . of the work . . .

21

to the public”?

22

results in the transmission of a performance of a work–the23

transmission from the Arroyo Server to the customer’s television

24

set.

25

than Cablevision, does the transmitting and thus the performing26

and (2) the transmission is not “to the public” under the27

transmit clause.

Id.

No one disputes that the RS-DVR playback

Cablevision contends that (1) the RS-DVR customer, rather

28

As to Cablevision’s first argument, we note that our29

conclusion in Part II that the customer, not Cablevision, “does”

30

the copying does not dictate a parallel conclusion that the31

customer, and not Cablevision, “performs” the copyrighted work.

32

The definitions that delineate the contours of the reproduction

-30-

1

and public performance rights vary in significant ways.

2

example, the statute defines the verb “perform” and the noun3

“copies,” but not the verbs “reproduce” or “copy.”4

not address Cablevision’s first argument further because, even if

5

we assume that Cablevision makes the transmission when an RS-DVR

6

playback occurs, we find that the RS-DVR playback, as described

7

here, does not involve the transmission of a performance “to the8

public.”

9

Id.

For

We needThe statute itself does not expressly define the term

10

“performance” or the phrase “to the public.”

11

that a transmission may be “to the public . . . whether the12members of the public capable of receiving the performance . . .

13receive it in the same place or in separate places and at the14same time or at different times.”

15

instructs us that, in determining whether a transmission is “to16

the public,” it is of no moment that the potential recipients of17

the transmission are in different places, or that they may

18receive the transmission at different times.

19

from this same language, however, is that it is relevant, in20

determining whether a transmission is made to the public, to21

discern who is “capable of receiving” the performance being

22

transmitted.

23

receiving the performance,” instead of “capable of receiving the24transmission,” underscores the fact that a transmission of a25

performance is itself a performance.

Id.

It does explain

This plain language

The implication

The fact that the statute says “capable of-31-

Cf. Buck v. Jewell-La Salle

1
2

Realty Co., 283 U.S. 191, 197-98 (1931).
The legislative history of the transmit clause supports this3

interpretation.

4

states that

The House Report on the 1976 Copyright Act

5
6
7
8
9
10
11
12
13
14
15
16

H.R. Rep. No. 94-1476, at 64-65 (1976), reprinted in 1976

17

U.S.C.C.A.N. 5659, 5678 (emphases added).

18[u]nder the bill, as under the present law, a performance
made available by transmission to the public at large is“public” even though the recipients are not gathered in asingle place, and even if there is no proof that any of thepotential recipients was operating his receiving apparatus
at the time of the transmission. The same principles apply
whenever the potential recipients of the transmission
represent a limited segment of the public, such as theoccupants of hotel rooms or the subscribers of a cable
television service.

Plaintiffs also reference a 1967 House Report, issued nearly19

a decade before the Act we are interpreting, stating that the20same principles apply where the transmission is “capable of21

reaching different recipients at different times, as in the case22of sounds or images stored in an information system and capable

23of being performed or displayed at the initiative of individual

24

members of the public.”

25(emphases added).

26

deserves.

27

report is consistent with both legislative history

28

contemporaneous with the Act’s passage and our own interpretation

29of the statute’s plain meaning.

H.R. Rep. No. 90-83, at 29 (1967)

We question how much deference this report

But we need not belabor the point here, as the 196730

From the foregoing, it is evident that the transmit clause31

directs us to examine who precisely is “capable of receiving” a
-32-

1

particular transmission of a performance.

2

that, because each RS-DVR transmission is made using a single

3

unique copy of a work, made by an individual subscriber, one that4

can be decoded exclusively by that subscriber’s cable box, only5

one subscriber is capable of receiving any given RS-DVR

6transmission.

7transmit clause, which, as described above, directs us to8

consider the potential audience of a given transmission.

9

unpersuaded by the district court’s reasoning and the plaintiffs’

10arguments that we should consider a larger potential audience in

11determining whether a transmission is “to the public.”

12

Cablevision argues

This argument accords with the language of the

We areThe district court, in deciding whether the RS-DVR playback

13

of a program to a particular customer is “to the public,”

14

apparently considered all of Cablevision’s customers who

15

subscribe to the channel airing that program and all of

16

Cablevision’s RS-DVR subscribers who request a copy of that17

program.

18

constituted public performances because “Cablevision would

19

transmit the same program to members of the public, who may

20

receive the performance at different times, depending on whether

21

they view the program in real time or at a later time as an RS-

22

DVR playback.”

23

added).

24

considering whether a transmission is “to the public,” we25consider not the potential audience of a particular transmission,

Thus, it concluded that the RS-DVR playbacks

Cablevision I, 478 F. Supp. 2d at 623 (emphasis

In essence, the district court suggested that, in

-33-

1

but the potential audience of the underlying work (i.e., “the2program”) whose content is being transmitted.

3

We cannot reconcile the district court’s approach with the4language of the transmit clause.

5

capable of receiving a particular “transmission” or6“performance,” and not of the potential audience of a particular

7“work.”

8

public” language surplusage.

9

for every copyrighted audiovisual work is the general public.

10

a result, any transmission of the content of a copyrighted work

11

would constitute a public performance under the district court’s

12interpretation.

13

the existence of non-public transmissions; if it did not,14

Congress would have stopped drafting that clause after15“performance.”

16

That clause speaks of people

Indeed, such an approach would render the “to the
Doubtless the potential audienceAs

But the transmit clause obviously contemplates

On appeal, plaintiffs offer a slight variation of this17

interpretation.

They argue that both in its real-time cablecast18

and via the RS-DVR playback, Cablevision is in fact transmitting

19

the “same performance” of a given work: the performance of the20

work that occurs when the programming service supplying

21

Cablevision’s content transmits that content to Cablevision and22

the service’s other licensees.

23

Twentieth Century Fox Film Corp. et al. at 27 (“Fox Br.”) (“The24critical factor . . . is that the same performance is transmitted

25

to different subscribers at different times . . . . more

See Br. of Pls.-Appellees

-34-

1

specifically, the performance of that program by HBO or another2

programming service.” (third emphasis added)).

3

Thus, according to plaintiffs, when Congress says that to4

perform a work publicly means to transmit. . . a performance. . .

5to the public, they really meant “transmit . . . the ‘original

6

performance’ . . . to the public.”

7

theory is that to determine whether a given transmission of a8

performance is “to the public,” we would consider not only the9potential audience of that transmission, but also the potential

10

audience of any transmission of the same underlying “original”

11

performance.

12

The implication of thisLike the district court’s interpretation, this view obviates

13

any possibility of a purely private transmission.

Furthermore,

14

it makes Cablevision’s liability depend, in part, on the actions

15of legal strangers.

16

to both Cablevision and Comcast.

17

the work from one Cablevision facility to another, while Comcast

18

retransmits the program to its subscribers.

19interpretation, Cablevision would still be transmitting the20

performance to the public, solely because Comcast has transmitted

21

the same underlying performance to the public.

22

hapless customer who records a program in his den and later

23

transmits the recording to a television in his bedroom would be24

liable for publicly performing the work simply because some other25

party had once transmitted the same underlying performance to theAssume that HBO transmits a copyrighted work
Cablevision merely retransmits-35-

Under plaintiffs’

Similarly, a1public.

2

We do not believe Congress intended such odd results.

3

Although the transmit clause is not a model of clarity, we

4believe that when Congress speaks of transmitting a performance5

to the public, it refers to the performance created by the act of

6transmission.

7

when it transmits to Cablevision, and Cablevision transmits its

8

own performance of the same work when it retransmits the feed

9from HBO.

10

Thus, HBO transmits its own performance of a work

Furthermore, we believe it would be inconsistent with our

11

own transmit clause jurisprudence to consider the potential

12

audience of an upstream transmission by a third party when13

determining whether a defendant’s own subsequent transmission of

14

a performance is “to the public.”

15

PrimeTime 24 Joint Venture (NFL), 211 F.3d 10 (2d Cir. 2000), we

16

examined the transmit clause in the context of satellite

17

television provider PrimeTime, which captured protected content

18

in the United States from the NFL, transmitted it from the United

19

States to a satellite (“the uplink”), and then transmitted it

20

from the satellite to subscribers in both the United States and21

Canada (“the downlink”).

22

its U.S. customers, but not its Canadian customers.

23

that although the downlink transmission to its Canadian

24

subscribers was a public performance, it could not be held liable

25

for that act because it occurred entirely outside of the United

In National Football League v.

PrimeTime had a license to transmit to-36-

It argued

1States and therefore was not subject to the strictures of the2

Copyright Act.

3

not a public performance because it was a transmission to a4

single satellite.

56

It also argued that the uplink transmission was

See id. at 12.

The NFL court did not question the first assumption, but it
flatly rejected the second on a specific and germane ground:

7
8
9
10
11
12
13
14
15

We believe the most logical interpretation of the CopyrightAct is to hold that a public performance or display includes
each step in the process by which a protected work wends its
way to its audience. Under that analysis, it is clear thatPrimeTime’s uplink transmission of signals captured in the
United States is a step in the process by which NFL’s
protected work wends its way to a public audience.
Id. at 13 (emphasis added) (internal quotation and citation

16

omitted).

17

the United States was not, in itself, “to the public,” the NFL18

court deemed it so because it ultimately resulted in an

19

undisputed public performance.

20

base its decision on the fact that an upstream transmission by21

another party (the NFL) might have been to the public.

22

the court base its decision on the fact that Primetime

23

simultaneously transmitted a performance of the work to the24

public in the United States.

25

downstream, rather than upstream or laterally, to determine

26

whether any link in a chain of transmissions made by a party

27

constitutes a public performance, we reject plaintiffs’

28

contention that we examine the potential recipients of the29

content provider’s initial transmission to determine who isThus, while the uplink transmission that took place in

Notably, the NFL court did not

Nor did

Because NFL directs us to look

-37-

1
2

capable of receiving the RS-DVR playback transmission.
Plaintiffs also rely on NFL for the proposition that3

Cablevision publicly performs a work when it splits its

4

programming stream and transmits the second stream to the RS-DVR

5system.

6

determine that the final transmission in the chain (i.e., the RS-

7

DVR playback transmission) is “to the public,” plaintiffs’

8reliance on NFL is misplaced.

9transmissions whose final link was undisputedly a public

10

performance.

11

Because NFL only supports that conclusion if we

NFL dealt with a chain of

It therefore does not guide our current inquiry.

In sum, none of the arguments advanced by plaintiffs or the12

district court alters our conclusion that, under the transmit

13

clause, we must examine the potential audience of a given

14transmission by an alleged infringer to determine whether that15transmission is “to the public.”

16

as designed, only makes transmissions to one subscriber using a17

copy made by that subscriber, we believe that the universe of18

people capable of receiving an RS-DVR transmission is the single

19

subscriber whose self-made copy is used to create that20transmission.

And because the RS-DVR system,

21

Plaintiffs contend that it is “wholly irrelevant, in

22

determining the existence of a public performance, whether

23‘unique’ copies of the same work are used to make the24transmissions.”

25

for this contention.

Fox Br. at 27.

But plaintiffs cite no authority

And our analysis of the transmit clause

-38-

1

suggests that, in general, any factor that limits the potential

2

audience of a transmission is relevant.

3

Furthermore, no transmission of an audiovisual work can be

4made, we assume, without using a copy of that work: to transmit a5

performance of a movie, for example, the transmitter generally

6

must obtain a copy of that movie.

7

movies, television programs, and other audiovisual works, the8right of reproduction can reinforce and protect the right of

9public performance.

10

injured by a particular transmission of a performance of his

11work, he may be able to seek redress not only for the infringing

12transmission, but also for the underlying copying that13

facilitated the transmission.

14

various rights in this context, it seems quite consistent with

15

the Act to treat a transmission made using Copy A as distinct

16

from one made using Copy B, just as we would treat a transmission

17

made by Cablevision as distinct from an otherwise identical

18transmission made by Comcast.

19transmitter and the source material of the transmission–limit the20

potential audience of a transmission in this case and are21

therefore germane in determining whether that transmission is22

made “to the public.”

As a result, in the context of

If the owner of a copyright believes he isGiven this interplay between theBoth factors–the identity of the23

Indeed, we believe that Columbia Pictures Industries, Inc.

24

v. Redd Horne, Inc., 749 F.2d 154 (3d Cir. 1984), relied on by25

both plaintiffs and the district court, supports our decision to

-39-

1

accord significance to the existence and use of distinct copies

2

in our transmit clause analysis.

3

operated a video rental store, Maxwell’s, which also housed a4number of small private booths containing seats and a television.

5

Patrons would select a film, enter the booth, and close the door.

6

An employee would then load a copy of the requested movie into a

7bank of VCRs at the front of the store and push play, thereby

8transmitting the content of the tape to the television in the9viewing booth.

10

In that case, defendantSee id. at 156-57.

The Third Circuit found that defendants’ conduct constituted

11

a public performance under both clauses of the statutory

12

definition.

13

clause, that court explicitly relied on the fact that defendants

14

showed the same copy of a work seriatim to its clientele, and it

15

quoted a treatise emphasizing the same fact:

16
17
18
19
20
21
22
23
24
25
26
27
28

In concluding that Maxwell’s violated the transmit

Professor Nimmer’s examination of this definition isparticularly pertinent: “if the same copy . . . of a given
work is repeatedly played (i.e., ‘performed’) by different
members of the public, albeit at different times, thisconstitutes a ‘public’ performance.” 2 M. Nimmer, § 8.14
[C][3], at 8-142 (emphasis in original). . . . Although
Maxwell’s has only one copy of each film, it shows each copy
repeatedly to different members of the public. This
constitutes a public performance.
Id. at 159 (first omission in original).
Unfortunately, neither the Redd Horne court nor Prof. Nimmer

29

explicitly explains why the use of a distinct copy affects the30

transmit clause inquiry.

31

the soundness of their intuition: the use of a unique copy may

But our independent analysis confirms

-40-

1

limit the potential audience of a transmission and is therefore

2

relevant to whether that transmission is made “to the public.”3

Plaintiffs’ unsupported arguments to the contrary are unavailing.

4

Given that each RS-DVR transmission is made to a given

5

subscriber using a copy made by that subscriber, we conclude that6such a transmission is not “to the public,” without analyzing the7

contours of that phrase in great detail.

8

the parties or the district court persuades us to the contrary.

No authority cited by

9

In addition to Redd Horne, the district court also cited and10

analyzed On Command Video Corp. v. Columbia Pictures Industries,

11

777 F. Supp. 787 (N.D. Cal. 1991), in its transmit clause

12

analysis.

13“a system for the electronic delivery of movie video tapes,”

14

which it sold to hotels.

15

a bank of video cassette players, each containing a copy of a16

particular movie.

17

movie via remote control from a list on his television.

18

corresponding cassette player would start, and its output would

19

be transmitted to that guest’s room.

20

movie selected was unavailable to other guests.

21

court concluded that the transmissions made by this system were22

made to the public “because the relationship between the23transmitter of the performance, On Command, and the audience,

24

hotel guests, is a commercial, ‘public’ one regardless of where25

the viewing takes place.”

In that case, defendant On Command developed and soldId. at 788.

The hub of the system was

From his room, a hotel guest could select a

During this playback, theId. at 790.

-41-

The

See id.

The

1Thus, according to the On Command court, any commercial

2transmission is a transmission “to the public.”

We find this3

interpretation untenable, as it completely rewrites the language

4of the statutory definition.

5commercial transmissions public performances, the transmit clause

6

would read: “to perform a work publicly means . . . to transmit a7

performance for commercial purposes.”

8

interpretation overlooks, as Congress did not, the possibility

9that even non-commercial transmissions to the public may diminish

10

the value of a copyright.

11

is factually distinguishable, as successive transmissions to12

different viewers in that case could be made using a single copy

13

of a given work.

14

hotel’s guests was capable of receiving a transmission made using

15

a single copy of a given movie.

16

in this case erred in relying on On Command.

If Congress had wished to make all

In addition, thisFinally, like Redd Horne, On Command

Thus, at the moment of transmission, any of the

As a result, the district court

17

Plaintiffs also rely on Ford Motor Co. v. Summit Motor

18

Products, Inc., 930 F.2d 277 (3d Cir. 1991), in which the Third

19

Circuit interpreted § 106(3) of the Copyright Act, which gives20

the copyright holder the exclusive right “to distribute copies .

21. . of the copyrighted work to the public,” 17 U.S.C. § 106(3)22(emphasis added).

23

be the public for the purposes of section 106(3).”24

F.2d at 299 (emphasis added).

25

Ford court for divesting the phrase “to the public” of “allThe court concluded that “even one person canFord, 930

Commentators have criticized the

-42-

1

meaning whatsoever,” 2 Nimmer & Nimmer, supra, § 8.11[A], at 8-2149, and the decision does appear to have that result.

3

this result was justified in the context of the distribution

4

right is not for us to decide in this case.

5

we find no compelling reason, in the context of the transmit

6

clause and the public performance right, to interpret the phrase

7“to the public” out of existence.

Whether

We merely note that8

In sum, we find that the transmit clause directs us to9

identify the potential audience of a given transmission, i.e.,10

the persons “capable of receiving” it, to determine whether that

11transmission is made “to the public.”

12

playback transmission is made to a single subscriber using a13

single unique copy produced by that subscriber, we conclude that14

such transmissions are not performances “to the public,” and15

therefore do not infringe any exclusive right of public

16

performance.

17

undisputed facts; thus, Cablevision is entitled to summary

18

judgment on this point.

19

Because each RS-DVR

We base this decision on the application ofThis holding, we must emphasize, does not generally permit

20

content delivery networks to avoid all copyright liability by21

making copies of each item of content and associating one unique22

copy with each subscriber to the network, or by giving their23

subscribers the capacity to make their own individual copies.

24

do not address whether such a network operator would be able to25

escape any other form of copyright liability, such as liability

-43-

We

1

for unauthorized reproductions or liability for contributory2

infringement.

3

In sum, because we find, on undisputed facts, that

4

Cablevision’s proposed RS-DVR system would not directly infringe

5

plaintiffs’ exclusive rights to reproduce and publicly perform6

their copyrighted works, we grant summary judgment in favor of

7

Cablevision with respect to both rights.

8

CONCLUSION

9For the foregoing reasons, the district court’s award of

10summary judgment to the plaintiffs is REVERSED and the district

11

court’s injunction against Cablevision is VACATED.

12

REMANDED for further proceedings consistent with this opinion.

13

-44-

The case is