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IP/Entertainment Case Law Updates

Fox Broadcasting Company v. Dish Network LLC

District court grants in part and denies in part cross-motions for summary judgment, finding that Supreme Court’s recent Aereo decision did not alter court’s earlier determination that DISH’s services do not infringe Fox’s copyrighted programming, but that certain of DISH’s services breach parties’ retransmission agreements.

Fox sued DISH Network for copyright infringement and breach of contract based on certain products and services that DISH offered to its television subscribers.

The court first considered DISH Anywhere, which enables subscribers to stream live and recorded programming from their set-top boxes to Internet-enabled devices, and which Fox alleged infringed its exclusive right to publicly perform its copyrighted works. Fox argued that the Supreme Court’s recent decision in American Broadcasting Companies, Inc. v. Aereo, Inc. was a “game-changer” that governed the outcome of its copyright claims. The court disagreed, distinguishing the technologies and volitional conduct presented by the two cases: Whereas Aereo streamed programming from its servers to its subscribers without authorization, DISH Anywhere merely allows subscribers to access live and recorded programming that they have legally received on their home set-top boxes and DVRs. As a result, DISH did not publicly perform Fox’s copyrighted content without authorization.

The court held that DISH Anywhere did not directly infringe Fox’s copyrights, because DISH did not engage in any volitional copying or transmission apart from the original authorized transmission to its subscribers. Instead, the DISH subscribers are the ones who copy and transmit Fox programming to themselves, by logging in and selecting the content they want to watch. The court also found that DISH is not secondarily liable, because DISH subscribers do not publicly perform Fox content—they merely stream or transfer it to their own devices—and private, noncommercial place-shifting of content is protected fair use.

On the breach of contract claims, the court held that DISH Anywhere does not breach the “other technologies” provision of the parties’ 2010 letter agreement, but does breach the “no copying” provision of an earlier 2002 Retransmission Consent Agreement.

Second, the court considered DISH’s PrimeTime Anytime (PTAT), which allows subscribers to record all of the prime-time programming of any or all of the four major broadcast networks. The court held that PTAT did not infringe Fox’s copyrights, as DISH does not engage in volitional copying giving rise to direct liability. In addition, the court held that DISH was not secondarily liable, because DISH subscribers’ use of PTAT to time-shift Fox’s programming is fair use. As to the breach of contract claims, the court held that the 2010 letter agreement did not supersede the “no distribution” provision of the 2002 Retransmission Consent Agreement, but that, in any event, PTAT did not breach the “no distribution” provision.

Third, the court considered AutoHop, which allows customers to automatically skip commercials while watching content recorded with PTAT. The court explained that because AutoHop itself does not copy any Fox content—it merely allows subscribers to watch that content without commercials—it does not infringe Fox’s copyrights. However, in testing the AutoHop service, DISH employees recorded quality assurance (QA) copies of Fox’s prime-time programming. The court held that the QA copies infringed Fox’s exclusive reproduction right and were not protected by fair use, but deferred the question of what amount of royalties would reasonably compensate Fox.

Finally, the court considered Hopper Transfers, which allows DISH subscribers to transfer copies of recordings from their DVR to a tablet or smartphone for later viewing at any location, with or without an Internet connection. The court found that Hopper Transfers did not involve volitional conduct by DISH and that secondary liability was precluded because subscribers’ place-shifting is fair use. The court held, however, that Hopper Transfers violated the “no copying” provision of the parties’ agreement.

Following the court’s initial release of an unredacted copy of its opinion, the parties agreed to stay the case while they attempt to negotiate a settlement.

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