Fox Broadcasting Company, Inc. v. Dish Network L.L.C.
723 F.3d 1067
9th Cir.2013Background
- Fox owns copyrights in primetime TV shows and licenses them to MVPDs and online services; Dish retransmits Fox under an existing contract with restrictions on distributing time-delayed/VOD content and copying.
- Dish released the Hopper DVR (with Joeys and Sling Adapter) and the PrimeTime Anytime feature, which automatically records primetime shows for subscribers (default: all four networks, 8 days retention) and stores recordings locally on customers’ Hoppers.
- Dish also introduced AutoHop, available for some PrimeTime Anytime recordings, which automatically skips commercial breaks during playback using marking files Dish creates; AutoHop does not delete or alter program files on the user’s device.
- Fox sued for copyright infringement and breach of contract and sought a preliminary injunction; the district court denied the injunction except noting probable infringement from Dish’s internal “quality assurance” copies used to test AutoHop but found no irreparable harm.
- On appeal, the Ninth Circuit reviewed denial of the preliminary injunction for abuse of discretion and affirmed: it held Fox unlikely to succeed on most infringement and contract claims and found no irreparable harm from the quality-assurance copies.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Direct reproduction liability for PrimeTime Anytime copies | Dish, not users, causes copies (Dish decides times, retention, prevents cancellation) so Dish directly infringes | Users initiate copies; Dish’s system merely responds; users are the primary cause of copying | Court: Fox unlikely to succeed; user, not Dish, makes the copy (no direct liability shown) |
| Secondary liability (contributory/vicarious) for user copying / fair use | Users’ copying (and commercial-skipping/library building) harms Fox’s markets; Dish is secondarily liable | User copying is noncommercial time-shifting (Sony) and fair use; AutoHop’s ad-skipping does not implicate Fox’s copyrights | Court: Dish likely to succeed on fair-use defense for user copying; Fox unlikely to show secondary liability |
| Breach of contract — 2002 contract (no “distribute”/no time-delayed VOD) | PrimeTime Anytime is a distribution/time-delayed/VOD making Dish breach contract | PrimeTime Anytime works like a DVR where copies remain in subscribers’ homes and do not “change hands” (no distribution) | Court: District court’s interpretation reasonable; Fox unlikely to prevail though term ambiguous; no abuse of discretion |
| Breach of 2010 letter (must disable fast-forward for VOD) & QA copies irreparable harm | PrimeTime Anytime is VOD and Dish circumvented fast-forward prohibition; quality-assurance copies cause irreparable harm to Fox’s licensing market | PrimeTime Anytime is more akin to DVR than VOD; quality-assurance copies are limited, used only internally, and monetary damages suffice | Court: PrimeTime Anytime found more like DVR; Fox unlikely to succeed on breach claims and failed to show irreparable harm from QA copies |
Key Cases Cited
- Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008) (remote-storage DVR decision analyzing who "made" copies)
- Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (U.S. 1984) (Betamax decision recognizing private noncommercial time-shifting as fair use)
- A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) (secondary liability requires underlying direct infringement)
- Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (U.S. 1985) (market harm is the most important fair-use factor)
- Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) (standards for reviewing preliminary injunctions in IP cases)