The Cartoon Network LP, LLLP v. CSC Holdings, Inc., No. 07-1480 (2d Cir. 2008)

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07-1480-cv (L) The Cartoon Network LP, LLLP v. CSC Holdings, Inc. 1 UNITED STATES COURT OF APPEALS 2 FOR THE SECOND CIRCUIT 3 4 5 August Term 2007 (Argued: October 24, 2007 Decided: August 4, 2008) 6 Docket Nos. 07-1480-cv(L) & 07-1511-cv(CON) 7 -----------------------------------------------------x 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 39 40 41 THE CARTOON NETWORK LP, LLLP and CABLE NEWS NETWORK L.P., L.L.L.P., Plaintiffs-Counter-Claimants-DefendantsAppellees, TWENTIETH CENTURY FOX FILM CORPORATION, UNIVERSAL CITY STUDIOS PRODUCTIONS LLLP, PARAMOUNT PICTURES CORPORATION, DISNEY ENTERPRISES INC., CBS BROADCASTING INC., AMERICAN BROADCASTING COMPANIES, INC., NBC STUDIOS, INC., Plaintiffs-Counter-Defendants-Appellees, -- v. -CSC HOLDINGS, INC. and CABLEVISION SYSTEMS CORPORATION, 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. -----------------------------------------------------x -1- 1 2 B e f o r e : WALKER, SACK, and LIVINGSTON, Circuit Judges. 3 Appeal from an entry of summary judgment in the United 4 States District Court for the Southern District of New York 5 (Denny Chin, Judge). 6 Corporation argues that the district court erred in holding that 7 its proposed Remote Storage Digital Video Recorder system 8 violates the Copyright Act by infringing plaintiffs exclusive 9 rights of reproduction and public performance. 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 39 40 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 the brief), New York, N.Y., for Defendants-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. -2- 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 39 40 41 42 43 44 45 46 47 48 49 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 of Composers, Authors & Publishers. Michael E. Salzman, Hughes Hubbard & Reed LLP, New York, N.Y., and Marvin Berenson, Broadcast Music Inc., New York, N.Y., for Amicus Curiae Broadcast Music, Inc. David Sohn, Center for Democracy & Technology, Washington, D.C., Fred von 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 Society of Media Photographers, Inc., -3- 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 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 of Media 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: 34 Defendant-Appellant Cablevision Systems Corporation 35 ( Cablevision ) wants to market a new Remote Storage Digital 36 Video Recorder system ( RS-DVR ), using a technology akin to both 37 traditional, set-top digital video recorders, like TiVo ( DVRs ), 38 and the video-on-demand ( VOD ) services provided by many cable 39 companies. 40 television programs that they provide to Cablevision pursuant to 41 numerous licensing agreements. Plaintiffs-Appellees produce copyrighted movies and They contend that Cablevision, -4- 1 through the operation of its RS-DVR system as proposed, would 2 directly infringe their copyrights both by making unauthorized 3 reproductions, and by engaging in public performances, of their 4 copyrighted works. 5 Because we conclude that Cablevision would not directly infringe 6 plaintiffs rights under the Copyright Act by offering its RS-DVR 7 system to consumers, we reverse the district court s award of 8 summary judgment to plaintiffs, and we vacate its injunction 9 against Cablevision. BACKGROUND 10 11 The material facts are not in dispute. Today s television viewers increasingly use digital video 12 recorders ( DVRs ) instead of video cassette recorders ( VCRs ) 13 to record television programs and play them back later at their 14 convenience. 15 internal hard drive rather than a cassette. 16 demonstrates, the generic term DVR actually refers to a growing 17 number of different devices and systems. 18 sell a stand-alone DVR device that is typically connected to a 19 user s cable box and television much like a VCR. 20 companies also lease to their subscribers set-top storage DVRs, 21 which combine many of the functions of a standard cable box and a 22 stand-alone DVR in a single device. 23 DVRs generally store recorded programming on an But, as this case Companies like TiVo Many cable In March 2006, Cablevision, an operator of cable television 24 systems, announced the advent of its new Remote Storage DVR 25 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 a 3 remote location. 4 those programs through their home television sets, using only a 5 remote control and a standard cable box equipped with the RS-DVR 6 software. 7 plaintiffs, of its plans to offer RS-DVR, but it did not seek any 8 license from them to operate or sell the RS-DVR. 9 RS-DVR customers may then receive playback of Cablevision notified its content providers, including Plaintiffs, which hold the copyrights to numerous movies and 10 television programs, sued Cablevision for declaratory and 11 injunctive relief. 12 operation of the RS-DVR would directly infringe their exclusive 13 rights to both reproduce and publicly perform their copyrighted 14 works. 15 theories only of direct infringement, not contributory 16 infringement, and defendants waived any defense based on fair 17 use. 18 They alleged that Cablevision s proposed Critically for our analysis here, plaintiffs alleged Ultimately, the United States District Court for the 19 Southern District of New York (Denny Chin, Judge), awarded 20 summary judgment to the plaintiffs and enjoined Cablevision from 21 operating the RS-DVR system without licenses from its content 22 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 our 25 decision to describe, in greater detail, both the RS-DVR and the 26 district court s opinion. See Twentieth Century Fox Film Corp. v. Cablevision -6- 1 I. Operation of the RS-DVR System 2 Cable companies like Cablevision aggregate television 3 programming from a wide variety of content providers the 4 various broadcast and cable channels that produce or provide 5 individual programs and transmit those programs into the homes of 6 their subscribers via coaxial cable. 7 transmission process, Cablevision gathers the content of the 8 various television channels into a single stream of data. 9 Generally, this stream is processed and transmitted to At the outset of the 10 Cablevision s customers in real time. 11 program is scheduled to air Monday night at 8pm, Cartoon Network 12 transmits that program s data to Cablevision and other cable 13 companies nationwide at that time, and the cable companies 14 immediately re-transmit the data to customers who subscribe to 15 that channel. 16 Thus, if a Cartoon Network Under the new RS-DVR, this single stream of data is split 17 into two streams. The first is routed immediately to customers 18 as before. 19 Broadband Media Router ( BMR ), id. at 613, which buffers the 20 data stream, reformats it, and sends it to the Arroyo Server, 21 which consists, in relevant part, of two data buffers and a 22 number of high-capacity hard disks. 23 moves to the first buffer (the primary ingest buffer ), at which 24 point the server automatically inquires as to whether any 25 customers want to record any of that programming. 26 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 then 2 onto a portion of one of the hard disks allocated to that 3 customer. 4 overwrite a corresponding quantity of data already on the buffer. 5 The primary ingest buffer holds no more than 0.1 seconds of each 6 channel s programming at any moment. 7 second, the data residing on this buffer are automatically erased 8 and replaced. 9 seconds of programming at any time. As new data flow into the primary buffer, they Thus, every tenth of a The data buffer in the BMR holds no more than 1.2 While buffering occurs at 10 other points in the operation of the RS-DVR, only the BMR buffer 11 and the primary ingest buffer are utilized absent any request 12 from an individual subscriber. 13 As the district court observed, the RS-DVR is not a single 14 piece of equipment, but rather a complex system requiring 15 numerous computers, processes, networks of cables, and facilities 16 staffed by personnel twenty-four hours a day and seven days a 17 week. 18 recording and playback on the RS-DVR are similar to that of a 19 standard set-top DVR. 20 record programming by selecting a program in advance from an on- 21 screen guide, or by pressing the record button while viewing a 22 given program. 23 portion of a program once it has begun. 24 customer selects the show from an on-screen list of previously 25 recorded programs. 26 in operation is that, instead of sending signals from the remote Id. at 612. To the customer, however, the processes of Using a remote control, the customer can A customer cannot, however, record the earlier See id. at 614-16. -8- To begin playback, the The principal difference 1 to an on-set box, the viewer sends signals from the remote, 2 through the cable, to the Arroyo Server at Cablevision s central 3 facility. 4 resembles a VOD service, whereby a cable subscriber uses his 5 remote and cable box to request transmission of content, such as 6 a movie, stored on computers at the cable company s facility. 7 Id. at 612. 8 content that they previously requested to be recorded. 9 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 for 10 recording: a customer can only record programs on the channels 11 offered by Cablevision (assuming he subscribes to them). 12 Cablevision can also modify the system to limit the number of 13 channels available and considered doing so during development of 14 the RS-DVR. 15 II. 16 Id. at 613. The District Court s Decision In the district court, plaintiffs successfully argued that 17 Cablevision s proposed system would directly infringe their 18 copyrights in three ways. 19 primary ingest buffer and other data buffers integral to the 20 function of the RS-DVR, Cablevision would make copies of 21 protected works and thereby directly infringe plaintiffs 22 exclusive right of reproduction under the Copyright Act. 23 by copying programs onto the Arroyo Server hard disks (the 24 playback copies ), Cablevision would again directly infringe the 25 reproduction right. 26 Arroyo Server hard disks to its RS-DVR customers in response to a First, by briefly storing data in the Second, And third, by transmitting the data from the -9- 1 playback request, Cablevision would directly infringe 2 plaintiffs exclusive right of public performance. 3 617. 4 awarded summary declaratory judgment to plaintiffs and enjoined 5 Cablevision from operating the RS DVR system without obtaining 6 licenses from the plaintiff copyright holders. See id. at Agreeing with all three arguments, the district court 7 As to the buffer data, the district court rejected 8 defendants arguments 1) that the data were not fixed and 9 therefore were not copies as defined in the Copyright Act, and 10 2) that any buffer copying was de minimis because the buffers 11 stored only small amounts of data for very short periods of time. 12 In rejecting the latter argument, the district court noted that 13 the aggregate effect of the buffering was to reproduce the 14 entirety of Cablevision s programming, and such copying can 15 hardly be called de minimis. 16 Id. at 621. On the issue of whether creation of the playback copies made 17 Cablevision liable for direct infringement, the parties and the 18 district court agreed that the dispositive question was who 19 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 23 court concluded that the copying of programming to the RS-DVR s 24 Arroyo servers . . . would be done not by the customer but by 25 Cablevision, albeit at the customer s request. 26 621. Id. at 617. Emphasizing Cablevision s -10- Id. at 618, 620, 1 Finally, as to the public performance right, Cablevision 2 conceded that, during the playback, the streaming of recorded 3 programming in response to a customer s request is a 4 performance. 5 the work was performed not by Cablevision, but by the customer, 6 an argument the district court rejected for the same reasons 7 that [it] reject[ed] the argument that the customer is doing 8 the copying involved in the RS-DVR. 9 argued that such a playback transmission was not to the public, Id. at 622. Cablevision contended, however, that Id. Cablevision also 10 and therefore not a public performance as defined in the 11 Copyright Act, because it emanates from a distinct copy of a 12 program uniquely associated with one customer s set-top box and 13 intended for that customer s exclusive viewing in his or her 14 home. 15 Cablevision would transmit the same program to members of the 16 public, who may receive the performance at different times, 17 depending on whether they view the program in real time or at a 18 later time as an RS-DVR playback. 19 The district court also relied on a case from the Northern 20 District of California, On Command Video Corp. v. Columbia 21 Pictures Industries, 777 F. Supp. 787 (N.D. Cal. 1991), which 22 held that when the relationship between the transmitter and the 23 audience of a performance is commercial, the transmission is to 24 the public, see Cablevision I, 478 F. Supp. 2d at 623 (citing On 25 Command, 777 F. Supp. at 790). Id. The district court disagreed, noting that -11- Id. at 623 (emphasis added). 1 Finding that the operation of the RS-DVR would infringe 2 plaintiffs copyrights, the district court awarded summary 3 judgment to plaintiffs and enjoined Cablevision from copying or 4 publicly performing plaintiffs copyrighted works in connection 5 with its proposed RS-DVR system, unless it obtained the 6 necessary licenses. 7 Cablevision appealed. Cablevision I, 478 F. Supp. 2d at 624. DISCUSSION 8 9 We review a district court s grant of summary judgment de 10 novo. 11 605, 607 (2d Cir. 2006). 12 Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d Section 106 of the Copyright Act grants copyright holders a 13 bundle of exclusive rights. . . . Id. at 607-08. This case 14 implicates two of those rights: the right to reproduce the 15 copyrighted work in copies, and the right to perform the 16 copyrighted work publicly. 17 discussed above, the district court found that Cablevision 18 infringed the first right by 1) buffering the data from its 19 programming stream and 2) copying content onto the Arroyo Server 20 hard disks to enable playback of a program requested by an RS-DVR 21 customer. 22 would infringe the public performance right by transmitting a 23 program to an RS-DVR customer in response to that customer s 24 playback request. 25 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 -12- 1 2 I. The Buffer Data It is undisputed that Cablevision, not any customer or other 3 entity, takes the content from one stream of programming, after 4 the split, and stores it, one small piece at a time, in the BMR 5 buffer and the primary ingest buffer. 6 information is buffered before any customer requests a recording, 7 and would be buffered even if no such request were made. 8 question is whether, by buffering the data that make up a given 9 work, Cablevision reproduce[s] that work in copies, 17 U.S.C. As a result, the 10 § 106(1), and thereby infringes the copyright holder s 11 The reproduction right. 12 Copies, as defined in the Copyright Act, are material 13 objects . . . in which a work is fixed by any method . . . and 14 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 17 stable to permit it to be . . . reproduced . . . for a period of 18 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, 22 reproduced, etc., from that medium (the embodiment 23 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). -13- The We See 1 8.02[B][3], at 8-32 (2007). 2 the work is not fixed in the buffer, and, as a result, the 3 buffer data is not a copy of the original work whose data is 4 buffered. 5 Unless both requirements are met, The district court mistakenly limited its analysis primarily 6 to the embodiment requirement. As a result of this error, once 7 it determined that the buffer data was [c]learly . . . capable 8 of being reproduced, i.e., that the work was embodied in the 9 buffer, 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 at 20 http://www.copyright.gov/reports/studies/dmca/sec-104-report-vol- 21 1.pdf. 22 In doing so, it relied It also relied on U.S. Copyright Office, The district court s reliance on cases like MAI Systems is 23 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, -14- 1 that such a requirement does not exist. 2 requirement, by itself, was not at issue in MAI Systems and its 3 progeny. 4 before us here: If a work is only embodied in a medium for a 5 period of transitory duration, can it be fixed in that medium, 6 and thus a copy? 7 transitory duration ? 8 9 Indeed, the duration As a result, they do not speak to the issues squarely And what constitutes a period of more than In MAI Systems, defendant Peak Computer, Inc., performed 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 the 17 computer s RAM was fixed, within the meaning of the same 18 section. 19 20 21 22 23 24 25 1 2 3 4 5 In order to service a customer s computer, a Peak See MAI Sys., 991 F.2d at The issue in MAI Systems was whether, by loading the See id. at 517. The resolution of this The Ninth Circuit concluded that by showing that Peak loads the software into the RAM and is then able to view the system error log and diagnose the problem with the computer, MAI has adequately shown that the representation created in the RAM is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise 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. -15- 1 2 3 4 Id. at 518 (quoting 17 U.S.C. § 101). 5 language but did not discuss or analyze it. 6 that the defendants vigorously argued that the program s 7 embodiment in the RAM was not a copy, but it does not specify the 8 arguments defendants made. 9 that the parties did not litigate the significance of the The MAI Systems court referenced the transitory duration Id. at 517. The opinion notes This omission suggests 10 transitory duration language, and the court therefore had no 11 occasion to address it. 12 fair to assume that in these cases the program was embodied in 13 the RAM for at least several minutes. 14 This is unsurprising, because it seems 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 18 always results in copying. 19 transitory duration language out of the definition, and we do 20 not believe our sister circuit would dismiss this statutory 21 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 a 24 program is loaded into RAM, the embodiment requirement is 25 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 1 reason to quibble with here.2 2 At least one court, relying on MAI Systems in a highly 3 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 for 7 minutes or longer, but that the program s embodiment in the 8 computer s RAM might be too ephemeral to be fixed if the computer 9 had been shut down within seconds or fractions of a second 10 after loading the copyrighted program. 845 F. Supp. 356, 363 11 (E.D. Va. 1994). 12 merely makes explicit the reasoning that is implicit in the other 13 MAI Systems cases. 14 for the conclusion that the definition of fixed does not 15 include a duration requirement. 16 507, 511 (1924) ( Questions which merely lurk in the record, 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 2 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 (2d Cir. 1998). Language in that opinion, taken out of context, suggests that the definition of fixed imposes only an embodiment requirement: Under § 101 s definition of copies, a work satisfies the fixation requirement when it is fixed in a material object from which it can be perceived or communicated directly or with the aid of a machine. Id. at 702. Like the MAI Systems cases, Matthew Bender only addresses the embodiment requirement: specifically, whether West s copyrighted arrangement of 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 case therefore 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, are 2 not to be considered as having been so decided as to constitute 3 precedents. ). 4 Nor does the Copyright Office s 2001 DMCA Report, also 5 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 9 fleetingly that it cannot be copied, perceived or communicated. However, as noted above, it does suggest that an 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 in 14 the medium for a period of more than transitory duration. 15 According to the Copyright Office, if the work is capable of 16 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 the 19 statute. 20 As we have stated, to determine The problem with this interpretation We assume, as the parties do, that the Copyright Office s 21 pronouncement deserves only Skidmore deference, deference based 22 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 from 3 concluding that the definition of fixed imposes both an 4 embodiment requirement and a duration requirement. 5 Group 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 that 8 they are of more than transitory duration ). 9 whether, in this case, those requirements are met by the buffer 10 11 Accord CoStar We now turn to data. Cablevision 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 a 23 minuscule portion of a work, rather than a work was embodied in 24 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 a Here, 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 than 3 transitory duration ? Id. No bit of data remains in any buffer 4 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 of 7 data here is rapidly and automatically overwritten as soon as it 8 is processed. 9 and other factors not present here may alter the duration And unlike the data in While our inquiry is necessarily fact-specific, 10 analysis significantly, these facts strongly suggest that the 11 works in this case are embodied in the buffer for only a 12 transitory period, thus failing the duration requirement. 13 Against this evidence, plaintiffs argue only that the 14 duration is not transitory because the data persist long enough 15 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 compelling 21 arguments to the contrary, we believe that the copyrighted works 22 here are not embodied in the buffers for a period of more than 23 transitory duration, and are therefore not fixed in the 24 buffers. 25 the RS-DVR do not create copies, as the Copyright Act defines 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 and 6 the identity of the infringer are never in doubt. These cases 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. In this case, however, the core of 10 After an RS-DVR subscriber selects a program to record, and that 11 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 by 18 plaintiffs. 19 The question is who made If 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 automatically 25 reproduced by the defendant s computer. -21- In Netcom, a The district court 1 refused to impose direct liability on the ISP, reasoning that 2 [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 a 5 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 by others to make illegal copies. There must be actual infringing conduct with a nexus sufficiently close and causal to the illegal copying that one could conclude that the machine owner himself trespassed on the exclusive domain of the copyright owner. CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 550 (4th Cir. 16 2004). 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 22 Internet liable for the conduct of a single user, 907 F. Supp. 23 at 1372, its reasoning and conclusions, consistent with 24 precedents of this court and the Supreme Court, and with the text 25 of the Copyright Act, transcend the Internet. 26 Circuit, we reject the contention that the Netcom decision was 27 driven by expedience and that its holding is inconsistent with 28 the established law of copyright, CoStar, 373 F.3d at 549, and 29 we find it a particularly rational interpretation of § 106, id. Cablevision I, 478 F. Supp. 2d at While 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 the 6 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 a 9 copy, and a customer s conduct in ordering that system to produce There are only two instances of volitional 10 a copy of a specific program. In the case of a VCR, it seems 11 clear and we know of no case holding otherwise that the operator 12 of the VCR, the person who actually presses the button to make 13 the recording, supplies the necessary element of volition, not 14 the person who manufactures, maintains, or, if distinct from the 15 operator, owns the machine. 16 customer is sufficiently distinguishable from a VCR user to 17 impose liability as a direct infringer on a different party for 18 copies that are made automatically upon that customer s command. 19 The district court emphasized the fact that copying is We do not believe that an RS-DVR 20 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 and 23 CoStar, it does not distinguish the RS-DVR from a VCR, a 24 photocopier, or even a typical copy shop. 25 seem to contest that a company that merely makes photocopiers Cablevision I, 478 F. Supp. 2d at 620. -23- While And the parties do not 1 available to the public on its premises, without more, is not 2 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. In the 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. Princeton Univ. 10 Press v. Mich. Document Servs., 99 F.3d 1381, 1384 (6th Cir. 11 1996) (en banc). 12 in that case that the shop itself was directly liable for 13 reproducing copyrighted works. 14 that Cablevision, like this copy shop, would be doing the 15 copying, albeit at the customer s behest. 16 F. Supp. 2d at 620. 17 There did not appear to be any serious dispute The district court here found Cablevision I, 478 But because volitional conduct is an important element of 18 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 then 21 volitionally operates the copying system to make the copy, and 22 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 like See 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, and 4 sold 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 See Netcom, 907 F. Supp. at 1369. Here, by selling 10 customers. Some courts have 11 held to the contrary, but they do not explicitly explain why, and 12 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 or 15 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, e.g., Elektra Records Co. v. Gem 18 discretion in selecting the programming that it would make 19 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, where 22 all copied content was supplied by the customers themselves or 23 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 3 significant 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 In this respect, Cablevision possesses far less control 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. 17 For these reasons, we are not As a result, we find Our refusal to find Cablevision directly liable on these 18 facts is buttressed by the existence and contours of the Supreme 19 Court s doctrine of contributory liability in the copyright 20 context. 21 doctrine is to identify the actor (or actors) whose conduct has 22 been 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 1 more 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 district 4 court e.g., Cablevision s continuing relationship with its RS- 5 DVR customers, its control over recordable content, and the 6 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 the 8 question of contributory liability. 9 Universal City Studios, Inc., the lack of an ongoing In Sony Corp. of America v. 10 relationship between Sony and its VCR customers supported the 11 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, not 16 direct, infringer. 17 copyrighted material is only incidental to a given technology 18 is akin to asking whether that technology has commercially 19 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). 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 copyright 24 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 an 2 infringer, 35 U.S.C. § 271(b), just like someone who commits the 3 underlying infringing act by us[ing] a patented invention 4 without authorization, id. § 271(a). 5 merely 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 a 9 copyright-infringing act and any person who actively induces that 10 infringement, the Patent Act tells us that it knew how to draft a 11 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 14 another. 15 Supreme Court has strongly signaled its intent to use the 16 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 direct 20 infringement, contributory infringement, and vicarious liability 21 are not clearly drawn, id. at 435 n.17 (internal quotation marks 22 and citation omitted), that decision does not absolve us of our 23 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, the Id. 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 that 3 Cablevision was a direct infringer, and thus, in effect, was 4 doing the relevant copying. 5 not binding on us, that follow this approach. 6 Enters. v. Russ Hardenburgh, Inc., 982 F. Supp. 503, 513 (N.D. 7 Ohio 1997) (noting that defendant ISP s encouragement of its 8 users to copy protected files was crucial to finding that it 9 was a direct infringer). There are certainly other cases, See, e.g., Playboy We need not decide today whether one s 10 contribution to the creation of an infringing copy may be so 11 great that it warrants holding that party directly liable for the 12 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 this 18 point, and the district court erred in awarding summary judgment 19 to plaintiffs. 20 III. Transmission of RS-DVR Playback 21 We conclude only that on the facts of this case, copies Plaintiffs final theory is that Cablevision will violate 22 the Copyright Act by engaging in unauthorized public performances 23 of their works through the playback of the RS-DVR copies. 24 Act grants a copyright owner the exclusive right, in the case of 25 . . . 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) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or (2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times. Id. § 101. The parties agree that this case does not implicate clause 18 (1). 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 the 23 transmission from the Arroyo Server to the customer s television 24 set. 25 than Cablevision, does the transmitting and thus the performing 26 and (2) the transmission is not to the public under the 27 transmit clause. 28 Accordingly, we ask whether these facts satisfy the second, Id. No one disputes that the RS-DVR playback Cablevision contends that (1) the RS-DVR customer, rather As to Cablevision s first argument, we note that our 29 conclusion in Part II that the customer, not Cablevision, does 30 the copying does not dictate a parallel conclusion that the 31 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 noun 3 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 the 8 public. 9 Id. For We need The 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 the 12 members of the public capable of receiving the performance . . . 13 receive it in the same place or in separate places and at the 14 same time or at different times. 15 instructs us that, in determining whether a transmission is to 16 the public, it is of no moment that the potential recipients of 17 the transmission are in different places, or that they may 18 receive the transmission at different times. 19 from this same language, however, is that it is relevant, in 20 determining whether a transmission is made to the public, to 21 discern who is capable of receiving the performance being 22 transmitted. 23 receiving the performance, instead of capable of receiving the 24 transmission, underscores the fact that a transmission of a 25 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 this 3 interpretation. 4 The House Report on the 1976 Copyright Act states that 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 a single place, and even if there is no proof that any of the potential 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 the occupants of hotel rooms or the subscribers of a cable television service. Plaintiffs also reference a 1967 House Report, issued nearly 19 a decade before the Act we are interpreting, stating that the 20 same principles apply where the transmission is capable of 21 reaching different recipients at different times, as in the case 22 of sounds or images stored in an information system and capable 23 of 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 29 of 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 1967 30 From the foregoing, it is evident that the transmit clause 31 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 that 4 can be decoded exclusively by that subscriber s cable box, only 5 one subscriber is capable of receiving any given RS-DVR 6 transmission. 7 transmit clause, which, as described above, directs us to 8 consider the potential audience of a given transmission. 9 unpersuaded by the district court s reasoning and the plaintiffs 10 arguments that we should consider a larger potential audience in 11 determining whether a transmission is to the public. 12 Cablevision argues This argument accords with the language of the We are The 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 that 17 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, we 25 consider 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., the 2 program ) whose content is being transmitted. 3 We cannot reconcile the district court s approach with the 4 language of the transmit clause. That clause speaks of people 5 capable of receiving a particular transmission or 6 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. Indeed, such an approach would render the to the Doubtless the potential audience As 10 a result, any transmission of the content of a copyrighted work 11 would constitute a public performance under the district court s 12 interpretation. 13 the existence of non-public transmissions; if it did not, 14 Congress would have stopped drafting that clause after 15 performance. 16 But the transmit clause obviously contemplates On appeal, plaintiffs offer a slight variation of this 17 interpretation. They argue that both in its real-time cablecast 18 and via the RS-DVR playback, Cablevision is in fact transmitting 19 the same performance of a given work: the performance of the 20 work that occurs when the programming service supplying 21 Cablevision s content transmits that content to Cablevision and 22 the service s other licensees. 23 Twentieth Century Fox Film Corp. et al. at 27 ( Fox Br. ) ( The 24 critical 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 another 2 programming service. (third emphasis added)). 3 Thus, according to plaintiffs, when Congress says that to 4 perform a work publicly means to transmit. . . a performance. . . 5 to the public, they really meant transmit . . . the original 6 performance . . . to the public. 7 theory is that to determine whether a given transmission of a 8 performance is to the public, we would consider not only the 9 potential audience of that transmission, but also the potential 10 audience of any transmission of the same underlying original 11 performance. 12 The implication of this Like 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 15 of 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. 19 interpretation, Cablevision would still be transmitting the 20 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 be 24 liable for publicly performing the work simply because some other 25 party had once transmitted the same underlying performance to the Assume that HBO transmits a copyrighted work Cablevision merely retransmits -35- Under plaintiffs Similarly, a 1 public. 2 We do not believe Congress intended such odd results. 3 Although the transmit clause is not a model of clarity, we 4 believe that when Congress speaks of transmitting a performance 5 to the public, it refers to the performance created by the act of 6 transmission. 7 when it transmits to Cablevision, and Cablevision transmits its 8 own performance of the same work when it retransmits the feed 9 from 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 when 13 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 and 21 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 1 States and therefore was not subject to the strictures of the 2 Copyright Act. 3 not a public performance because it was a transmission to a 4 single satellite. 5 6 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 Copyright Act 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 that PrimeTime 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 NFL 18 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 by 21 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 the 24 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 the 29 content provider s initial transmission to determine who is Thus, 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 that 3 Cablevision publicly performs a work when it splits its 4 programming stream and transmits the second stream to the RS-DVR 5 system. 6 determine that the final transmission in the chain (i.e., the RS- 7 DVR playback transmission) is to the public, plaintiffs 8 reliance on NFL is misplaced. 9 transmissions whose final link was undisputedly a public 10 11 Because NFL only supports that conclusion if we performance. NFL dealt with a chain of It therefore does not guide our current inquiry. In sum, none of the arguments advanced by plaintiffs or the 12 district court alters our conclusion that, under the transmit 13 clause, we must examine the potential audience of a given 14 transmission by an alleged infringer to determine whether that 15 transmission is to the public. 16 as designed, only makes transmissions to one subscriber using a 17 copy made by that subscriber, we believe that the universe of 18 people capable of receiving an RS-DVR transmission is the single 19 subscriber whose self-made copy is used to create that 20 transmission. 21 And because the RS-DVR system, 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 the 24 transmissions. 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 4 made, we assume, without using a copy of that work: to transmit a 5 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, the 8 right of reproduction can reinforce and protect the right of 9 public performance. As a result, in the context of If the owner of a copyright believes he is 10 injured by a particular transmission of a performance of his 11 work, he may be able to seek redress not only for the infringing 12 transmission, but also for the underlying copying that 13 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 18 transmission made by Comcast. 19 transmitter and the source material of the transmission limit the 20 potential audience of a transmission in this case and are 21 therefore germane in determining whether that transmission is 22 made to the public. 23 Given this interplay between the Both factors the identity of the Indeed, we believe that Columbia Pictures Industries, Inc. 24 v. Redd Horne, Inc., 749 F.2d 154 (3d Cir. 1984), relied on by 25 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 a 4 number 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 7 bank of VCRs at the front of the store and push play, thereby 8 transmitting the content of the tape to the television in the 9 viewing booth. 10 In that case, defendant See 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 is particularly 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, this constitutes 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 the 30 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 that 6 such a transmission is not to the public, without analyzing the 7 contours of that phrase in great detail. 8 the parties or the district court persuades us to the contrary. 9 No authority cited by In addition to Redd Horne, the district court also cited and 10 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 a 16 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 were 22 made to the public because the relationship between the 23 transmitter of the performance, On Command, and the audience, 24 hotel guests, is a commercial, public one regardless of where 25 the viewing takes place. In that case, defendant On Command developed and sold Id. at 788. The hub of the system was From his room, a hotel guest could select a During this playback, the Id. at 790. -41- The See id. The 1 Thus, according to the On Command court, any commercial 2 transmission is a transmission to the public. We find this 3 interpretation untenable, as it completely rewrites the language 4 of the statutory definition. 5 commercial transmissions public performances, the transmit clause 6 would read: to perform a work publicly means . . . to transmit a 7 performance for commercial purposes. 8 interpretation overlooks, as Congress did not, the possibility 9 that even non-commercial transmissions to the public may diminish If Congress had wished to make all In addition, this 10 the value of a copyright. Finally, like Redd Horne, On Command 11 is factually distinguishable, as successive transmissions to 12 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. 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 gives 20 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 all The court concluded that even one person can Ford, 930 Commentators have criticized the -42- 1 meaning whatsoever, 2 Nimmer & Nimmer, supra, § 8.11[A], at 8- 2 149, 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. 8 9 Whether We merely note that In sum, we find that the transmit clause directs us to identify the potential audience of a given transmission, i.e., 10 the persons capable of receiving it, to determine whether that 11 transmission is made to the public. 12 playback transmission is made to a single subscriber using a 13 single unique copy produced by that subscriber, we conclude that 14 such transmissions are not performances to the public, and 15 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 of This holding, we must emphasize, does not generally permit 20 content delivery networks to avoid all copyright liability by 21 making copies of each item of content and associating one unique 22 copy with each subscriber to the network, or by giving their 23 subscribers the capacity to make their own individual copies. 24 do not address whether such a network operator would be able to 25 escape any other form of copyright liability, such as liability -43- We 1 for unauthorized reproductions or liability for contributory 2 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 perform 6 their copyrighted works, we grant summary judgment in favor of 7 Cablevision with respect to both rights. 8 CONCLUSION 9 For the foregoing reasons, the district court s award of 10 summary 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

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