Fox Broadcasting Co. v. Dish Network LLC
160 F. Supp. 3d 1139
C.D. Cal.2015Background
- Fox (broadcaster/copyright owner) sued DISH (MVPD) alleging copyright infringement and contract breaches arising from DISH features: DISH Anywhere (Sling), PTAT/AutoHop (commercial-skipping), Hopper Transfers, and EchoStar QA copies.
- Relevant contracts: 2002 Retransmission Consent Agreement (No-Distribution; No-Copying for anything other than consumers’ private home use) and a 2010 Letter Agreement (includes an Other Technologies provision, VOD terms, merger clause, and an Anti‑Circumvention clause); parties litigated choice-of-law but court applied New York law.
- Technologies at issue: DISH Anywhere (place‑shifting via Sling from subscriber’s home STB to subscriber’s remote device); PTAT (automated primetime block recordings saved in subscriber’s DVR); AutoHop (skips commercials using timestamped announcement files); Hopper Transfers (copies DVR recordings to mobile devices for offline viewing); EchoStar QA copies (internal copies used to test AutoHop).
- Key legal theories: (1) copyright — public performance, reproduction, distribution; (2) contract — alleged breaches of No‑Copying/No‑Distribution and the 2010 Letter Agreement provisions; (3) secondary liability and fair use defenses (Sony/time‑shifting, Cablevision volitional‑conduct precedent, Aereo decision).
- Procedural posture: cross‑motions for summary judgment; Ninth Circuit had previously affirmed denial of preliminary injunctions; district court resolves a number of copyright and contract issues on summary judgment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether DISH Anywhere publicly performs copyrighted works (copyright) | Fox: streaming via DISH Anywhere/Sling is a public performance (Aereo controls) | DISH: service simply enables a subscriber to access content already delivered to their in‑home STB; user initiates transmission (volitional act); point‑to‑point or user transmission | Held: DISH Anywhere does NOT publicly perform; summary judgment for DISH granted on this copyright claim. |
| Whether DISH Anywhere breaches 2010 Letter Agreement "Other Technologies" clause | Fox: Other Technologies prohibits DISH from distributing/retransmitting Fox over Internet, so DISH Anywhere breaches | DISH: clause preserves subscribers’ rights under applicable law/doesn’t bar Sling; parol evidence shows parties’ intent | Held: Court enforces merger clause and contract text; triable issues on interpretation resolved for defendant — DISH’s summary judgment granted; Fox’s motion denied re: this breach claim. |
| Whether DISH Anywhere violates 2002 Agreement No‑Copying provision (i.e., "authorize" retransmission outside the home) | Fox: DISH authorizes subscribers to retransmit Fox content off‑site (so it authorizes copying/retransmission outside home) | DISH: subscribers, not DISH, effect the retransmission; fair use/place‑shifting defenses | Held: DISH authorizes subscribers to retransmit and thus breaches No‑Copying when content is used outside home; liability on contract claim survives (damages triable). |
| Whether PTAT/AutoHop constitute copyright infringement (reproduction/distribution/public performance) | Fox: PTAT/AutoHop create/distribute copies or perform publicly (Aereo/"make available" theory) | DISH: users initiate recording; volitional conduct rests with users; PTAT is like DVR/time‑shifting (Sony); AutoHop skips but does not alter copies; fair use | Held: No direct or secondary copyright liability for PTAT/AutoHop; PTAT/Hopper Transfers uses are fair use; summary judgment for DISH on those copyright claims. |
| Whether EchoStar QA copies (used to develop/test AutoHop) infringe and breach contracts | Fox: QA copies reproduce copyrighted works without authorization and breach No‑Copying; market for licensing copies exists | DISH: QA copies are intermediate/developmental and fair use (Sega/Connectix analogies) or were made by vendor/independent contractor | Held: QA copies infringe reproduction right (not fair use) and breach the No‑Copying Provision; Fox entitled to liability; damages (reasonable royalties) are triable. |
| Whether Hopper Transfers breaches No‑Copying or infringes copyrights | Fox: Hopper Transfers authorizes copies for use outside home, breaching contract and implicating reproduction/distribution rights | DISH: users make and transfer copies; activity is fair use/time‑shifting; copyright defenses preempt contract? | Held: Copyright liability rejected (fair use); but Hopper Transfers breaches 2002 No‑Copying (DISH authorized out‑of‑home copying) — summary judgment for Fox on contract liability. |
Key Cases Cited
- Am. Broad. Cos. v. Aereo, Inc., 134 S. Ct. 2498 (2014) (Supreme Court holding that Aereo’s service publicly performed broadcast works under the Transmit Clause)
- Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008) (Cablevision — volitional‑conduct and user‑initiated copying important to direct liability)
- Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984) (time‑shifting by consumers can be fair use; equipment suppliers not liable for noncommercial private time‑shifting)
- Metro‑Goldwyn‑Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (secondary liability: inducement and vicarious liability standards)
- Fox Broad. Co. v. Dish Network, LLC, 723 F.3d 1067 (9th Cir. 2013) (appeal addressing volitional conduct and preliminary injunction issues in this dispute)
- Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992) (intermediate copying for reverse engineering may be fair use under specific circumstances)
- Sony Computer Entm’t Am. v. Connectix Corp., 203 F.3d 596 (9th Cir. 2000) (intermediate copying to create noninfringing replacement product analyzed under fair use)