FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

FOX BROADCASTING COMPANY,

INC.; TWENTIETH CENTURY FOX

FILM CORPORATION; FOX

TELEVISION HOLDINGS, INC.,

Plaintiffs-Appellants,

v.

DISH NETWORK L.L.C.; DISH

NETWORK CORPORATION,

Defendants-Appellees.

No. 12-57048

D.C. No.

2:12-cv-04529-

DMG-SH

ORDER AND

AMENDED

OPINION

Appeal from the United States District Court

for the Central District of California

Dolly M. Gee, District Judge, Presiding

Argued and Submitted

June 4, 2013—Pasadena, California

Filed July 24, 2013

Amended January 24, 2014

Before: Sidney R. Thomas, Barry G. Silverman,

and Raymond C. Fisher, Circuit Judges.

Opinion by Judge Thomas
2 FOX BROADCASTING CO. V. DISH NETWORK

SUMMARY*

Copyright / Preliminary Injunction

The panel filed an order denying petitions for panel

rehearing and rehearing en banc and amending its opinion

affirming the district court’s denial of a broadcaster’s request

for a preliminary injunction in a copyright infringement

action regarding a pay television provider’s products that

skipped over commercials.

In its amended opinion, the panel held that the district

court did not abuse its discretion in holding that the

broadcaster failed to demonstrate a likelihood of success on

its copyright infringement and breach of contract claims

regarding the television provider’s implementation of the

commercial-skipping products. As to a direct copyright

infringement claim, the record did not establish that the

provider, rather than its customers, made copies of television

programs for viewing. The broadcaster did not establish a

likelihood of success on its claim of secondary infringement

because, although it established a prima facie case of direct

infringement by customers, the television provider showed

that it was likely to succeed on its affirmative defense that the

customers’ copying was a “fair use.” Applying a “very

deferential” standard of review, the panel concluded that the

district court did not abuse its discretion in denying a

preliminaryinjunction based on the alleged contract breaches.

* This summary constitutes no part of the opinion of the court. It has

been prepared by court staff for the convenience of the reader.
FOX BROADCASTING CO. V. DISH NETWORK 3

The panel also held that the broadcaster failed to

demonstrate a likelihood of irreparable harm from the

provider’s creation of television-show copies used to perfect

the functioning of one of its commercial-skipping products.

COUNSEL

Paul M. Smith (argued), Jenner & Block LLP, New York,

New York; Richard L. Stone, Andrew J. Thomas, David R.

Singer, and Amy M. Gallegos, Jenner & Block LLP, Los

Angeles, California, for Plaintiffs-Appellants.

E. Joshua Rosenkranz (argued), Peter A. Bicks, Elyse D.

Echtman, and Lisa T. Simpson, Orrick, Herrington &

Sutcliffe LLP, New York, New York; Annette L. Hurst and

William A. Molinski, Orrick, Herrington & Sutcliffe LLP,

San Francisco, California; Mark A. Lemley and Michael H.

Page, Durie Tangri LLP, San Francisco, California, for

Defendants-Appellees.

Robert A. Long, Jennifer A. Johnson, and David M. Zionts,

Covington & Burling LLP, Washington, D.C., for Amici

Curiae ABC Television Affiliates Association et al.

Jeffrey A. Lamken and Robert K. Kry, MoloLamken LLP,

Washington, D.C., for Amicus Curiae Cablevision Systems

Corp.

Mark J. Prak, Charles F. Marshall, Julia C. Ambrose, and

Laura S. Chipman, Brooks, Pierce, McLendon, Humphrey &

Leonard, LLP, Raleigh, North Carolina; Jane E. Mago,

Jerianne Timmerman, Bart Stringham, and Benjamin F. P.

Ivins, National Association of Broadcasters, Washington,
4 FOX BROADCASTING CO. V. DISH NETWORK

D.C., for Amicus Curiae National Association of

Broadcasters.

Kelly M. Klaus and Jonathan H. Blavin, Munger, Tolles &

Olson LLP, Los Angeles, California, for Amici Curiae

Paramount Pictures Corp. et al.

Seth D. Greenstein and Robert S. Schwartz, Constantine

Cannon LLP, Washington, D.C., for Amici Curiae Computer

& Communications Industry Association et al.

Mitchell L. Stoltz and Corynne McSherry, Electronic Frontier

Foundation, San Francisco, California; John Bergmayer,

Public Knowledge, Washington, D.C.; Betsy Rosenblatt,

Organization for Transformative Works, New York, New

York, for Amici Curiae Electronic Frontier Foundation et al.

Jason Schultz, Samuelson Law, Technology & Public Policy

Clinic, University of California, Berkeley, School of Law,

Berkeley, California, for Amici Curiae law scholars and

professors.

ORDER

The opinion filed July 24, 2013, 723 F.3d 1067, is

amended as follows:

At 723 F.3d 1067, 1074, at the end of the first paragraph,

following the parenthetical “(quoting Prosser & Keeton on

Torts § 42)” insert the following as a footnote:

Although the district court misquoted Prosser & Keeton’s

treatise, it did not abuse its discretion in concluding that the
FOX BROADCASTING CO. V. DISH NETWORK 5

user is “the most ‘significant and important’ cause of the

copy.”

With the opinion as amended, the panel has unanimously

voted to deny the petition for rehearing. Judges Thomas and

Silverman voted to deny the petition for rehearing en banc

and Judge Fisher recommended voting to deny the petition

for rehearing en banc. The full court has been advised of the

petition for rehearing en banc, and no judge of the court has

requested a vote on the petition for rehearing en banc. Fed.

R. App. P. 35(b).

The petition for rehearing and the petition for rehearing

en banc are DENIED.

No further petitions for rehearing or rehearing en banc

will be entertained.

OPINION

THOMAS, Circuit Judge:

Dish Network offers two marsupial-inspired products: 

the “Hopper,” which “hops” over commercials, and a

companion box known as a “Joey.” Fox Broadcasting

Company claims these products are contractually out of

bounds and constitute copyright infringement. The district

court denied the broadcaster’s request for a preliminary

injunction. We have jurisdiction under 28 U.S.C. § 1292, and

we affirm.
6 FOX BROADCASTING CO. V. DISH NETWORK

I

Plaintiffs FoxBroadcastingCompany, TwentiethCentury

Fox Film Corp., and Fox Television Holdings, Inc.

(collectively, “Fox”) own the copyrights to television shows

that air on the Fox television network. Its primetime lineup

includes shows such as Glee, Bones, The Simpsons, and

Family Guy. Fox contracts with cable and satellite television

service providers to retransmit Fox’s broadcast signal for the

customers of these providers, known as multichannel video

programming distributors. Some such distributors also offer

Fox programming via video on demand. Fox separately

licenses its shows to companies such as Hulu, Apple, Netflix,

and Amazon, which sell Fox programs online or stream them

over the Internet.

One distributor that Fox contracts with is Dish Network,

the third-largest pay television service provider in the United

States. Dish retransmits Fox’s broadcast signal under a 2002

contract with Dish’s former parent company and current

technology vendor, EchoStar Technologies. Among other

things, the contract provides that Dish shall not “distribute”

Fox programs on an “interactive, time-delayed, video-ondemand or similar basis,” though Dish may “connect[] its

Subscribers’ video replay equipment.” Dish also cannot

“record, copy, duplicate and/or authorize the recording,

copying, duplication (other than by consumers for private

home use) or retransmission” of any part of Fox’s signal.

Fox and Dish have amended this contract several times,

most recently in a 2010 letter agreement. Under that

agreement, Dish could provide Fox Video On Demand to its

subscribers, but Dish had to “disable fast forward

functionality during all advertisements”; the contract stated
FOX BROADCASTING CO. V. DISH NETWORK 7

“such fast-forward disabling is a necessary condition to

distribution of the Fox broadcast content via [video on

demand].” The 2010 agreement also forbids Fox and Dish

from attempting to “frustrate or circumvent” the contractual

rights.

In March 2012, Dish released to its customers the Hopper,

a set-top box with digital video recorder (DVR) and video on

demand capabilities. The Hopper provides service to up to

four televisions in a home using companion boxes (known as

Joeys) wired to each television. Dish customers can also

watch Hopper content on their computers and mobile devices

using a product called the Sling Adapter.

At the same time it released the Hopper, Dish introduced

a feature called PrimeTime Anytime that works only on the

Hopper. PrimeTime Anytime allows a subscriber to set a

single timer to record any and all primetime programming on

the four major broadcast networks (including Fox) every

night of the week. To enable PrimeTime Anytime, a Hopper

user presses the “*” button on the remote control to reach the

PrimeTime Anytime setup screen. The user selects “Enable,”

and a new menu appears where the viewer can disable

recordings of certain networks on certain days of the week

and change the length of time that the shows are saved

(between two and eight days). By default, PrimeTime

Anytime records primetime shows on all four networks each

night of the week and saves all recordings for eight days.1

1 Prior to July 2012, a viewer who enabled PrimeTime Anytime could

not deselect any networks or days of the week, and could not save

recordings for fewer than eight days. The district court “examine[d] the

propriety of the Hopper features in their current form, as Dish has stated

that it has no plans to return to its pre-July 20, 2012 practices.” Fox
8 FOX BROADCASTING CO. V. DISH NETWORK

Dish determines the start and end time of the PrimeTime

Anytime recordings each night and sometimes alters these

times to record programming outside the traditional

primetime window of 8 p.m. to 11 p.m. Eastern and Pacific

time Monday through Saturday and 7 p.m. to 11 p.m. on

Sunday (Primetime starts and ends one hour earlier in the

Mountain and Central time zones.). For instance, Dish

altered the times to accommodate Olympic programming on

NBC in summer 2012. If at least half of a program falls

within the primetime window, Dish includes the entire show

in the PrimeTime Anytime recording.

A user may start watching recorded programs

immediately after PrimeTime Anytime starts recording. The

user must enable PrimeTime Anytime at least 15 minutes

before the primetime recording begins and can cancel a

PrimeTime Anytime recording up to 15 minutes before the

recording begins; after that, a user can no longer cancel that

day’s PrimeTime Anytime recording.

All PrimeTime Anytime recordings are stored locally on

a customer’s Hopper for the preselected number of days

(typically eight), at which time they are automatically

deleted. Before that time, a customer cannot actually delete

or save a PrimeTime Anytime recording. Rather, if the

customer selects “Save” or “Save Series” from the

PrimeTime Anytime menu, an icon is created in the

customer’s “My Recordings” folder, but the icon is simply

linked to the PrimeTime Anytime recording until the time of

automatic deletion, at which time a duplicate copy is created. 

Similarly, if a customer “deletes” a show recorded through

Broad. Co. v. Dish Network, LLC, 905 F. Supp. 2d 1088, 1094 n.6 (C.D.

Cal. 2012).
FOX BROADCASTING CO. V. DISH NETWORK 9

PrimeTime Anytime, the icon for that show disappears from

the user’s graphical user interface, but the recording remains

on the customer’s hard drive until it is automatically deleted.

Dish customers can also use the Hopper to access payper-view movies via video on demand, but Dish does not

offer video on demand from any of the four broadcast

networks, including Fox. Video on demand recordings are

stored on the user’s hard drive in a file directory separate

from the PrimeTime Anytime and DVR recordings.

In May 2012, Dish started offering a new feature,

AutoHop, that allows users to automatically skip

commercials. AutoHop is only available on shows recorded

using PrimeTime Anytime, typically on the morning after the

live broadcast. It is not available for all primetime programs. 

When a user plays back a PrimeTime Anytime recording, if

AutoHop is available, a pop-up screen appears that allows the

user to select the option to “automatically skip over”

commercial breaks. By default, AutoHop is not selected.

If a customer enables AutoHop, the viewer sees only the

first and last few seconds of each commercial break. A red

kangaroo icon appears in the corner of the screen to

demonstrate that AutoHop is skipping commercials. Unlike

the 30-second skip feature available on many DVRs, once a

user has enabled AutoHop, the user does not press anything

to skip through commercials. AutoHop does not delete

commercials from the recording. Customers can see the

commercials if they manually rewind or fast-forward into a

commercial break.

To create the AutoHop functionality, Dish technicians in

Cheyenne, Wyoming manually view Fox’s primetime
10 FOX BROADCASTING CO. V. DISH NETWORK

programing each night and technologically mark the

beginning and end of each commercial. The program content

is not altered in any way. The electronically marked files are

then uplinked in Wyoming and eventually transmitted to

subscribers in an “announcement” file that Dish makes

available to subscribers after the show has aired. 

Simultaneously with the uplink, three “beta Hoppers” record

the Fox primetime block for transmissions in Kentucky,

Pennsylvania, and Florida to test the marking announcement. 

These copies remain at the uplink facility and are used to

make sure the commercials have been accuratelymarked and

that no portion of the program has been cut off.

Fox sued Dish for copyright infringement and breach of

contract and sought a preliminary injunction. The district

court denied the motion. Fox Broad. Co. v. Dish Network,

LLC, 905 F. Supp. 2d 1088 (C.D. Cal. 2012). It held that Fox

did not demonstrate a likelihood of success on most of its

copyright infringement and contract claims. The exceptions

were Fox’s claims regarding the quality assurance copies. In

making these copies, the court held, Dish likely breached its

contract with Fox and directly infringed Fox’s reproduction

rights. Id. at 1102–06, 1108. Nonetheless, the court held that

Fox was not entitled to an injunction because it failed to

establish that it would likely suffer “irreparable harm” as a

result of those copies. Id. at 1109–11.

To obtain a preliminaryinjunction, Fox must demonstrate

that (1) it is likely to succeed on the merits, (2) it is likely to

suffer irreparable harm in the absence of preliminary relief,

(3) the balance of equities tips in its favor, and (4) an
FOX BROADCASTING CO. V. DISH NETWORK 11

injunction is in the public interest. Winter v. Natural Res.

Def. Council, Inc., 555 U.S. 7, 20 (2008).2

We review the denial of a preliminary injunction for an

abuse of discretion. Perfect 10, Inc. v. Amazon.com, Inc.,

508 F.3d 1146, 1157 (9th Cir. 2007). Factual findings are

reviewed for clear error, and legal conclusions are reviewed

de novo. Id. We do not reverse “simply because the

appellate court would have arrived at a different result if it

had applied the law to the facts of the case.” Sports Form,

Inc. v. United Press Int’l, Inc., 686 F.2d 750, 752 (9th Cir.

1982); see also United States v. Hinkson, 585 F.3d 1247,

1261–62 (9th Cir. 2009) (en banc).

Applying this deferential standard of review, we hold that

the district court did not abuse its discretion in holding that

Fox did not demonstrate a likelihood of success on its

copyright infringement and breach of contract claims

regarding Dish’s implementation of PrimeTime Anytime and

AutoHop. Furthermore, the district court did not err in

holding that Fox did not demonstrate a likelihood of

irreparable harm from Dish’s creation of the “quality

assurance” copies used to perfect the functioning of

AutoHop.

2 Alternatively, a plaintiff may obtain an injunction if it demonstrates (1)

serious questions going to the merits, (2) a balance of hardships that tips

sharply towardsthe plaintiff, (3) a likelihood of irreparable injury, and (4)

the injunction is in the public interest. Alliance for the Wild Rockies v.

Cottrell, 632 F.3d 1127, 1135 (9th Cir. 2011). Because Fox does not

argue that the balance of hardships tips sharply in its favor, we do not

consider its claims under this standard.
12 FOX BROADCASTING CO. V. DISH NETWORK

II

A

The district court did not abuse its discretion in holding

that Fox was unlikely to succeed on its claim of direct

copyright infringement regarding PrimeTime Anytime. “To

establish a claim of copyright infringement by reproduction,

the plaintiff must show ownership of the copyright and

copying by the defendant.” Kelly v. Arriba Soft Corp.,

336 F.3d 811, 817 (9th Cir. 2003); see also 17 U.S.C.

§§ 106(1), 501(a).

In this case, the district court determined that Fox had

demonstrated ownership of the copyrights of some of the

shows. The court then focused on who made the copies of

Fox programs using PrimeTime Anytime: Dish or its

customers. The district court noted that the Second Circuit

had considered a similar question in Cartoon Network LP v.

CSC Holdings, Inc. (“Cablevision”), 536 F.3d 121 (2d Cir.

2008). The Second Circuit concluded that Cablevision’s

remote-storage DVR system did not directly infringe the

plaintiffs’ copyrights. Unlike a typical DVR system, in

which a customer’s remote sends signals to the set-top box in

her home, users of Cablevision’s remote-storage DVR system

sent signals to Cablevision’s central facility, where a copy of

the program the viewer selected was created and stored on

Cablevision’s central servers. Id. at 125, 130. The question

was “who made this copy” – the viewer or Cablevision? Id.

at 130. The Second Circuit held that much like a VCR user

makes the copy, so did the Cablevision customer. Id. at 131.

In this case, the district court found that “Dish exercises

a degree of discretion over the copying process beyond that
FOX BROADCASTING CO. V. DISH NETWORK 13

which was present in Cablevision.” Fox Broad., 905 F. Supp.

2d at 1102. It pointed to the facts that Dish decides how long

copies are available for viewing, Dish maintains the authority

to modify the start and end times of the primetime block, and

a user cannot stop a copy from being made once the recording

has started. Id. at 1101–02. Yet the court held that “at this

stage of the proceedings,” it was “not satisfied” that

PrimeTime Anytime had “crossed over the line that leads to

direct liability.” Id. at 1102. The court held that the “user,

not Dish, must take the initial step of enabling” PrimeTime

Anytime. Id. “The user, then, and not Dish, is ‘the most

significant and important cause’ of the copy.” Id. (quoting

Prosser & Keeton on Torts § 42).3

The district court did not abuse its discretion in

concluding that Fox had not established a likelihood of

success on this claim. Infringement of the reproduction right

requires “copying by the defendant,” Kelly, 336 F.3d at 817

(emphasis added), which comprises a requirement that the

defendant cause the copying. See Cablevision, 536 F.3d at

130 (explaining that direct infringement claim turned on “who

made” the copies). Fox argues that because Dish participates

in the operation of PrimeTime Anytime on a daily basis, Dish

made the copies, either alone or concurrently with its users. 

However, operating a system used to make copies at the

user’s command does not mean that the system operator,

rather than the user, caused copies to be made. Here, Dish’s

program creates the copy only in response to the user’s

command. Therefore, the district court did not err in

concluding that the user, not Dish, makes the copy.

3 Although the district court misquoted Prosser & Keeton’s treatise, it

did not abuse its discretion in concluding that the user is “the most

‘significant and important’ cause of the copy.”
14 FOX BROADCASTING CO. V. DISH NETWORK

That Dish decides how long copies are available for

viewing, modifies the start and end times of the primetime

block, and prevents a user from stopping a recordingmight be

relevant to a secondary or perhaps even a direct infringement

claim. Cf. Cablevision, 536 F.3d at 132–33 (finding that

factors evidencing Cablevision’s control over copying

process seemed “more relevant to the question of contributory

liability” but reserving the question “whether one’s

contribution to the creation of an infringing copy may be so

great that it warrants holding that party directly liable for the

infringement, even though another party has actually made

the copy”). But these facts do not establish that Dish made

the copies. Therefore, the district court did not err in holding

that Fox did not establish a likelihood of success on its direct

infringement claim.

B

The district court did not abuse its discretion in

concluding that Fox was unlikely to succeed on its claim of

secondary copyright infringement for the PrimeTime

Anytime and AutoHop programs. “Secondary liability for

copyright infringement does not exist in the absence of direct

infringement by a third party.” A&M Records, Inc. v.

Napster, Inc., 239 F.3d 1004, 1013 n.2 (9th Cir. 2001). 

Therefore, to establish secondaryliability, Fox must establish

that Dish’s users are infringing. There is no dispute that Fox

has established a prima facie case of direct infringement by

Dish customers because Fox owns the copyrights to its shows

and the users make copies. Thus, the burden shifts to Dish to

demonstrate that it is likely to succeed on its affirmative

defense that its customers’ copying was a “fair use.” Perfect

10, 508 F.3d at 1158. Dish has met this burden.
FOX BROADCASTING CO. V. DISH NETWORK 15

As the district court recognized, the Supreme Court’s

analysis in Sony Corp. of Am. v. Universal City Studios, Inc.,

464 U.S. 417 (1984), provides strong guidance in assessing

whether Dish customers’ copying of Fox programs is a “fair

use.” In Sony, the Supreme Court held that Sony was not

liable for secondaryinfringement for manufacturingBetamax

VCRs because customers used the machines primarily for

time-shifting, “the practice of recording a program to view it

once at a later time, and thereafter erasing it.” Id. at 423. The

Court held that “even the unauthorized home time-shifting of

respondents’ programs is legitimate fair use.” Id. at 442.

Fox and its amici argue that Dish customers use

PrimeTime Anytime and AutoHop for purposes other than

time-shifting – namely, commercial-skipping and librarybuilding. These uses were briefly discussed in Sony, in which

the Court recognized that some Betamax customers used the

device to avoid viewing advertisements and accumulate

libraries of tapes. In Sony, about 25 percent of Betamax users

fast-forwarded through commercials. Id. at 452 n.36. 

Additionally, a “substantial number of interviewees had

accumulated libraries of tapes.” Id. at 423. One user owned

about 100 tapes and bought his Betamax intending to “build

a library of cassettes,” but this “proved too expensive.” Id. at

423 n.3. Because the Betamax was primarily used for timeshifting, the Court in Sony never expressly decided whether

commercial-skipping and library-building were fair uses. Cf.

Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.,

545 U.S. 913, 931 (2005) (explaining that “[a]lthough Sony’s

advertisements urged consumers to buy the VCR to ‘record

favorite shows’ or ‘build a library’ of recorded programs,

neither of these uses was necessarily infringing” (citations

omitted)).
16 FOX BROADCASTING CO. V. DISH NETWORK

Yet, as the district court held, commercial-skipping does

not implicate Fox’s copyright interest because Fox owns the

copyrights to the television programs, not to the ads aired in

the commercial breaks. If recording an entire copyrighted

program is a fair use, the fact that viewers do not watch the

ads not copyrighted by Fox cannot transform the recording

into a copyright violation. Indeed, a recording made with

PrimeTime Anytime still includes commercials; AutoHop

simply skips those recorded commercials unless a viewer

manually rewinds or fast-forwards into a commercial break. 

Thus, any analysis of the market harm should exclude

consideration of AutoHop because ad-skipping does not

implicate Fox’s copyright interests.

Analyzing PrimeTime Anytime under the fair use factors,

Dish has demonstrated a likelihood of success on its

customers’ fair use defense. As for the first factor, the

“purpose and character of the use, including whether such use

is of a commercial nature or is for nonprofit educational

purposes,” 17 U.S.C. § 107(1), Dish customers’ home

viewing is noncommercial under Sony, which held that “timeshifting for private home use” was a “noncommercial,

nonprofit activity,” 464 U.S. at 449. Here, the district court

found that PrimeTime Anytime is used for time-shifting, and

that the Hopper is available only to private consumers. Fox

Broad., 905 F. Supp. 2d at 1098.

Sony also governs the analysis of the second and third

factors, the “nature of the copyrighted work” and “the amount

and substantiality of the portion used in relation to the

copyrighted work as a whole,” 17 U.S.C. §§ 107(2), (3). 

Sony held that “when one considers the nature of a televised

copyrighted audiovisual work, and that time-shifting merely

enables a viewer to see such a work which he had been
FOX BROADCASTING CO. V. DISH NETWORK 17

invited to witness in its entirety free of charge, the fact that

the entire work is reproduced, does not have its ordinary

effect of militating against a finding of fair use.” 464 U.S. at

449–50 (citations omitted). The same analysis applies here,

and thus the fact that Dish users copy Fox’s entire

copyrighted broadcasts does not have its ordinary effect of

militating against a finding of fair use.

Finally, we consider the “effect of the use upon the

potential market for or value of the copyrighted work.” 

17 U.S.C. § 107(4). This is the “most important element of

fair use.” Harper & Row Publishers, Inc. v. Nation Enters.,

471 U.S. 539, 566 (1985). Because Dish customers’ taping

is “for a noncommercial purpose,” the likelihood of future

market harm is not presumed but “must be demonstrated.” 

Sony, 464 U.S. at 451. Fox “need only show that if the

challenged use ‘should become widespread, it would

adversely affect the potential market for the copyrighted

work.’” Harper & Row, 471 U.S. at 568 (quoting Sony,

464 U.S. at 451 (emphasis added by Harper & Row Court)).

Because Fox licenses its programs to distributors such as

Hulu and Apple, the market harm analysis is somewhat

different than in Sony, where no such secondary market

existed for the copyright-holders’ programs.4 However, the

record before the district court establishes that the market

harm that Fox and its amici allege results from the automatic

commercial-skipping, not the recording of programs through

PrimeTime Anytime. Indeed, Fox often charges no additional

license fees for providers to offer Fox’s licensed video on

4

Instead, the Sony plaintiffs argued in part that the Betamax would

reduce the audience for live television and movies, a fear the district court

described as lacking “factual basis.” 464 U.S. at 453.
18 FOX BROADCASTING CO. V. DISH NETWORK

demand, so long as providers disable fast-forwarding. This

indicates that the ease of skipping commercials, rather than

the on-demand availability of Fox programs, causes any

market harm. And as we have discussed, the commercialskipping does not implicate any copyright interest.

In arguing otherwise, Fox points to the district court’s

market harm analysis in a different section of its opinion. 

However, that analysis is not relevant to determining whether

PrimeTime Anytime causes market harm because that portion

of the opinion addresses a different question: whether the

“quality assurance” copies used to test AutoHop would harm

the market for Fox to license copies of its shows. Because

the quality assurance copies were used to perfect AutoHop,

the district court assessed whether AutoHop caused market

harm and found that Dish “harms Fox’s opportunity to

negotiate a value for [authorized] copies and also inhibits

Fox’s ability to enter into similar licensing agreements with

others in the future by making the copies less valuable.” Fox

Broad., 905 F. Supp. 2d at 1105. However, the court’s

analysis of the market harm caused by the quality assurance

copies does not affect the assessment of whether Dish

customers’ copying of programs potentially causes market

harm because the district court correctly found that AutoHop,

standing alone, does not infringe.

Therefore, the district court did not abuse its discretion in

concluding that Fox was unlikely to succeed on its secondary

infringement claim.

C

The question of whether Dish has breached its contract

with Fox is much closer. However, applying our very
FOX BROADCASTING CO. V. DISH NETWORK 19

deferential standard of review, we conclude that the district

court did not abuse its discretion in denying a preliminary

injunction based on the alleged contract breaches.

Fox first argues that Dish breached the portion of the

2002 contract that states:

EchoStar [now Dish] shall not, for pay or

otherwise, record, copy, duplicate and/or

authorize the recording, copying, duplication

(other than by consumers for private home

use) or retransmission of any portion of any

Station’s Analog Signal without prior written

permission of the Station, except as is

specifically permitted by this Agreement.

Fox’s argument as to why Dish allegedly breached this

clause is the same as its argument that Dish directly infringed

its copyrights. It does not argue that the contract’s use of

“record, copy, duplicate” has a different meaning than the

Copyright Act’s definition of “reproduce.” Given that Dish

did not directly infringe Fox’s copyrights, the district court

properly concluded that Fox is unlikely to succeed on its

claim that Dish breached this clause.

Second, Fox argues that Dish breached the following

provision in the 2002 contract:

EchoStar acknowledges and agrees that it

shall have no right to distribute all or any

portion of the programming contained in any

AnalogSignal on an interactive, time-delayed,

video-on-demand or similar basis; provided

that Fox acknowledges that the foregoing
20 FOX BROADCASTING CO. V. DISH NETWORK

shall not restrict EchoStar’s practice of

connecting its Subscribers’ video replay

equipment . . . .

The district court construed the contract term “distribute”

to be analogous to the same word in the Copyright Act,

17 U.S.C. § 106(3). It held that distribution under the

Copyright Act required a copyrighted work to “chang[e]

hands,” Fox Broad., 905 F. Supp. 2d at 1106, and Dish

engaged in no distribution because the PrimeTime Anytime

copies “are made by users, remain in private homes, and do

not change hands,” id. at 1107. Therefore, it held, Fox was

unlikely to prevail on its claim that Dish breached this

contract provision.5

On appeal, Fox challenges this construction of

“distribute,” essentially arguing that the prohibition against

“distribut[ing]” Fox programming constitutes an agreement

that Dish would not make Fox programming available to its

subscribers. Fox’s interpretation is plausible, but so is the

district court’s. While the district court would not be justified

in holding that the meaning of the term “distribute” was

unambiguous or that, as a matter of law, any ambiguous terms

in the contract should be interpreted by looking to the

Copyright Act, we do not read the district court’s opinion as

resting its decision on such grounds. In the proceedings

below, the parties did not argue about the meaning of

“distribute.” Absent any argument or extrinsic evidence on

5 Fox also argued below that Dish violated its right “to distribute

copies . . . of the copyrighted work to the public” under 17 U.S.C.

§ 106(3). The district court held that Fox was unlikely to succeed on this

claim. Fox Broad., 905 F. Supp. 2d at 1106. Fox has not challenged this

ruling on appeal.
FOX BROADCASTING CO. V. DISH NETWORK 21

this term, the district court did not err by looking to the

Copyright Act to interpret “distribute.” We express no view

on whether, after a fully developed record and arguments, the

district court’s construction of “distribute” will prove to be

the correct one.

We are, however, dubious of Dish’s position that

PrimeTime Anytime is not “similar” to “interactive,

time-delayed, [or] video-on-demand” programming, the

distribution of which is expressly prohibited by the 2002

contract. Dish has convinced us that PrimeTime Anytime is

not identical to video-on-demand but is at a loss to explain

why it is not similar, and at oral argument, when pressed,

Dish could not provide even a single example of what would

be considered similar under the contract if not this. The

contract is written broadly, and Fox has a good argument that

PrimeTime Anytime is “similar,” even though not exactly the

same, as time-delayed or video-on-demand programming.

Third, Fox argues that Dish breached a provision of a

2010 letter agreement that modified the 2002 contract. The

letter agreement permitted Dish to offer Fox’s licensed video

on demand (VOD) service so long as Dish disabled fastforwarding during commercials:

DISH will disable fast forward

functionality during all advertisements; FBC

and DISH may include a pre-roll

announcement prior to each show regarding

the fast-forward disabling. DISH and FBC

will discuss in good faith the timing of

DISH’s implementation of such fast-forward

disabling and messaging to consumers;

provided that DISH acknowledges and agrees
22 FOX BROADCASTING CO. V. DISH NETWORK

that such fast-forward disabling is a

necessary condition to distribution of the Fox

broadcast content via VOD. (Emphasis

added.)

The district court held that if PrimeTime Anytime is video

on demand, then Dish clearly breached the contract. The

court found this dispute “especially challenging because

[PrimeTime Anytime] is, in some ways, a hybrid of DVR and

VOD likely not contemplated by either party when the 2010

Agreement was drafted.” Fox Broad., 905 F. Supp. 2d at

1109. But the district court concluded that PrimeTime

Anytime was “more akin” to DVR than to video on demand. 

Id.

Because the district court based its interpretation on

extrinsic evidence, we review its holding for clear error. 

Miller v. Safeco Title Ins. Co., 758 F.2d 364, 367 (9th Cir.

1985). The district court’s finding that PrimeTime Anytime

was more akin to a DVR than to video on demand was not

clearly erroneous. Because, unlike the relevant clause of the

2002 contract, this provision of the 2010 letter agreement

does not preclude Dish from enabling fast-forwarding on

services that are “similar” to video on demand, the district

court did not abuse its discretion in concluding that Fox was

unlikely to succeed on its breach of contract claim.

The fact that a Dish attorney referred to PrimeTime

Anytime as a “video-on-demand service” in a trademark

application supports Fox’s claim that the parties would have

understood PrimeTime Anytime to be akin to video on

demand. Providing further support are Dish promotional

materials that repeatedly referred to PrimeTime Anytime

providing “On Demand access” or an “on demand library.” 
FOX BROADCASTING CO. V. DISH NETWORK 23

However, Dish introduced evidence that programming

distributors such as itself and DirecTV have used the phrase

“on demand” to refer to DVR recordings, which are clearly

not video on demand. And the district court relied in part on

the fact that a viewer must enable PrimeTime Anytime before

a show airs to view it later, which is an important feature

distinguishing DVR from video on demand. Fox. Broad.,

905 F. Supp. 2d at 1109. Therefore, in light of the record

before it, the district court did not clearly err in concluding

that PrimeTime Anytime was more like DVR than video on

demand.

Finally, Fox argues that Dish breached the portion of the

2010 letter agreement that provides that neither party may

“take any action whatsoever intended to frustrate or

circumvent, or attempt to frustrate or circumvent, the

protections granted to the other Party pursuant to any

provision in this Letter Agreement.” Contrary to Fox’s

argument, the record does not indicate that Dish launched

PrimeTime Anytime because it was unwilling to comply with

the requirements to offer Fox’s licensed video on demand

service, rather than because Dish lacked the technological

capability to do so. On this record, Fox has not demonstrated

it is likely to succeed on this claim.

Therefore, the district court did not abuse its discretion in

concluding that Fox did not demonstrate a likelihood of

success on its breach of contract claims.

III

The district court held that Dish likely directly infringed

Fox’s copyrights and breached the no-copying clause of the

2002 contract by making “quality assurance” copies to test
24 FOX BROADCASTING CO. V. DISH NETWORK

the functioning of the AutoHop program. However, it

ultimately concluded that Fox did not demonstrate a

likelihood of irreparable harm absent an injunction. 

Assuming, without deciding, that the district court correctly

decided that Fox was likely to succeed on the merits of this

claim, we agree with the district court that Fox did not

demonstrate a likelihood of irreparable harm resulting from

these copies.

These copies were made as part of Dish’s process of

implementing the AutoHop program. As we have noted,

Dish creates marking announcements to signal to AutoHop

when to skip commercials. It then tests the accuracy of the

marking announcements using copies recorded through

PrimeTime Anytime. These copies remain at a Dish facility

and are used for “quality assurance” purposes only. A

technician working for Dish then plays back each recording,

enables AutoHop, and fast-forwards through each show

segment just until the point of each commercial break to

ensure AutoHop is working properly. If the marking

announcements are correct, AutoHop is made available to

Dish customers at 3 a.m. Eastern time on the morning

following the live broadcast.

In refusing to enjoin Dish from creating these copies, the

district court correctly concluded that the harms Fox

identified – including “loss of control over its copyrighted

works and loss of advertising revenue” – did not “flow from”

the quality assurance copies themselves, but from the entire

AutoHop program. Fox Broad., 905 F. Supp. 2d at 1110–11. 

While a plaintiff need not “show that the action sought to be

enjoined is the exclusive cause of the injury,” M.R. v.

Dreyfus, 697 F.3d 706, 728 (9th Cir. 2011), the district court

did not err in concluding that the quality assurance copies
FOX BROADCASTING CO. V. DISH NETWORK 25

were not a cause of Fox’s alleged harm. That Dish used the

copies in the process of implementing AutoHop does not

suggest that those copies were integral to AutoHop’s

functioning. Rather, the record demonstrates that the

AutoHop announcement files are created using an entirely

separate process and the quality assurance copies are used

only to test whether this process is working.

6

Furthermore, the district court did not err in holding that

monetary damages could compensate Fox for its losses from

the copies. See, e.g., L.A. Mem’l Coliseum Comm’n v. Nat’l

Football League, 634 F.2d 1197, 1202 (9th Cir. 1980)

(“[M]onetaryinjuryis not normallyconsidered irreparable.”). 

To be sure, Fox does not license copies of its programs for

distributors to create ad-skipping software. However, the

lack of a licensing agreement that directly corresponds to

Dish’s copying of Fox programs does not mean it would be

difficult to calculate damages. Fox’s existing licensing

agreements could, at the very least, constitute a starting point

or an aid in calculating damages.

IV

Given our “limited and deferential” review of preliminary

injunction appeals, Sw. Voter Registration Educ. Project v.

Shelley, 344 F.3d 914, 918 (9th Cir.2003) (en banc) (per

curiam), and without determining the ultimate merits of the

case, Am. Trucking Ass'ns, Inc. v. City of L.A., 559 F.3d

6

Indeed, Dish has temporarily stopped making the quality assurance

copies pending the outcome of this appeal.
26 FOX BROADCASTING CO. V. DISH NETWORK

1046, 1052 (9th Cir. 2009), we conclude that the district court

did not abuse its discretion in declining to grant Fox a

preliminary injunction.7

AFFIRMED.

 

7

 The parties’ motions for judicial notice are DENIED.