Supreme Court Rejects Cert. Bid In DVR Case

Without those issues, the solicitor general recommended that the Supreme Court not hear the case. “That artificial truncation of the possible grounds for decision would make this case an unsuitable vehicle for clarifying the proper application of copyright principles to technologies like the one at issue here,” wrote U.S. Solicitor General Elena Kagan in a brief in May.

The television networks sued, alleging that Cablevision was infringing their copyrights by making copies on their servers at customers' behests. After the networks won at the district court in New York, the U.S. Court of Appeals for the Second Circuit tossed the ruling, finding that the company's DVR was no different than a VCR. The Cartoon Network LP v. CSC Holdings Inc., 536 F.3d 121 (2d Cir. 2008).

“I'm not surprised that cert was not granted, given the narrow issue that was going up,” says Neil Smith, an IP lawyer at Sheppard, Mullin, Richter & Hampton who was not involved in the case.

With the Second Circuit's decision in The Cartoon Network LP v. CSC Holdings Inc. now to remain in place, following are excerpts from that ruling as well as from some recent court rulings that have cited The Cartoon Network case.

' From The Cartoon Network LP v. CSC Holdings:

'The question is whether, by buffering the data that make up a given work, Cablevision 'reproduce[s]' that work 'in copies,' 17 U.S.C. '106(1), and thereby infringes the copyright holder's reproduction right. '

'After an RS-DVR subscriber selects a program to record, and that program airs, a copy of the program ' a copyrighted work ' resides on the hard disks of Cablevision's Arroyo Server, its creation unauthorized by the copyright holder. The question is who made this copy. If it is Cablevision, plaintiffs' theory of direct infringement succeeds; if it is the customer, plaintiffs' theory fails because Cablevision would then face, at most, secondary liability, a theory of liability expressly disavowed by plaintiffs. '

'Cablevision, we note, also has subscribers who use home VCRs or DVRs (like TiVo), and has significant control over the content recorded by these customers. But this control is limited to the channels of programming available to a customer and not to the programs themselves. Cablevision has no control over what programs are made available on individual channels or when those programs will air, if at all. In this respect, Cablevision possesses far less control over recordable content than it does in the [video-on-demand] context, where it actively selects and makes available beforehand the individual programs available for viewing. For these reasons, we are not inclined to say that Cablevision, rather than the user, 'does' the copying produced by the RS-DVR system. '

'Does Cablevision 'transmit ' a performance ' of the work ' to the public'? ' [W]e find that the transmit clause [of 17 U.S.C. '101] directs us to identify the potential audience of a given transmission, i.e., the persons 'capable of receiving' it, to determine whether that transmission is made 'to the public.' Because each RS-DVR playback transmission is made to a single subscriber using a single unique copy produced by that subscriber, we conclude that such transmissions are not performances 'to the public,' and therefore do not infringe any exclusive right of public performance.'

' From Sony Music Entertainment v. Cloud, 08-CV-01200 (E.D.Pa. 2009), in which the Eastern District of Pennsylvania refused to dismiss a copyright infringement suit against an ISP user over alleged unauthorized file sharing:

'Defendant contends that the Second Circuit case Cartoon Network LP v. CSC Holding Inc. states that in order for a reproduction to take place that the material object must be 'fixed,' or 'sufficiently permanent or stable.' Even if this ruling were binding precedent upon this Court, Defendant's contention is misleading as she fails to put forth the full test of a material object articulated by that case. '[T]he work must be embodied in a medium, i.e., placed in a medium such that it can be perceived, reproduced, etc. from that medium (the 'embodiment requirement'), and it must remain thus embodied for a period of more than transitory duration (the 'duration requirement').' '

'Defendant makes no showing that Plaintiffs' allegations do not satisfy either the embodiment requirement or the duration requirement. In their Complaint, Plaintiffs allege that P2P networks 'refer to computer system of processes that enable Internet users to search for files (including audio recordings) stored on other's computers and transfer exact copies of from one computer to another via the Internet.' Hence, Plaintiffs allege that the object in question could be 'perceived', reproduced, etc.' within the medium of an audio file stored in a computer.'

' From Arista Records LLC v. Usenet.com Inc., 07 Civ. 8822(HB) (S.D.N.Y. 2009), in which the Southern District of New York granted summary judgment for record companies over the ability of the defendants' subscribers to engage in unauthorized downloading of the labels' sound recordings via Internet bulletin board services:

'Defendants cite the Second Circuit's decision in Cartoon Network LLLP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir.2008) (Cablevision) for the proposition that direct infringement requires some volitional conduct on the part of the service provider, and where a service acts as a mere 'passive conduit' for delivery of works requested by users, it cannot be liable for direct infringement as a matter of law. Plaintiffs urge that the court in Cablevision addressed only direct infringement of the exclusive rights of reproduction and public performance under sections 106(1) and 106(6) of the Copyright Act, and limited the 'volitional conduct' requirement to the issues addressed in that case, and not to the exclusive right of distribution. I disagree. Although the particular circumstances before the court in Cablevision involved the exclusive rights not at issue here, the court made clear that 'volitional conduct is an important element of direct liability.' Id. at 131. '

'Defendants were well aware that digital music files were among the most popular articles on their service, and took active measures to create servers dedicated to mp3 files and to increase the retention times of newsgroups containing digital music files. ' Moreover, Defendants took active steps, including both automated filtering and human review, to remove access to certain categories of content, and to block certain users, ' and Defendants admit that they have control over which newsgroups their servers accept and store and which they reject, and that they routinely exercised that control ', [C]ontrary to Defendants' contentions, here their service is not merely a 'passive conduit' that facilitates the exchange of content between users who upload infringing content and users who download such content; rather, Defendants actively engaged in the process so as to satisfy the 'volitional-conduct' requirement for direct infringement.

' From KBL Corp. v. Arnouts, 08 Civ. 4873(JGK) (S.D.N.Y. 2009), in which the Southern District of New York granted a motion to dismiss a suit for contribution, indemnification and inducement to infringe brought by a home builder against an architect. (The home builder had settled two copyright infringement suits against it over home designs related to its hiring of the architect.):

'The plaintiff has not identified any legal authority indicating that the Copyright Act provides for an inducement to infringe claim that is distinct from contributory infringement. Indeed, the case law supports the opposite conclusion. See, Cartoon Network LP LLP v. CSC Holdings Inc., 536 F.3d 121, 133 (2d. 2008) ('If Congress had meant to assign direct liability to both the person who actually commits a copyright-infringing act and any person who actively induces that infringement, the Patent Act tells us that it knew how to draft a statute that would have this effect. ' [T]he Supreme Court has strongly signaled its intent to use the doctrine of contributory infringement, not direct infringement, to 'identify the circumstances in which it is just to hold one individual accountable for the actions of another.' ') (quoting Sony Corp. of America v. Universal City Studios Inc., 464 U.S. 417, 435, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984)) (internal alterations omitted) ' Because the plaintiff has failed to show that a claim for inducement to infringe can exist separately from a claim for contributory infringement, and a claim for contributory infringement under the Copyright Act cannot lie among co-infringers, the plaintiff cannot state a claim for inducement to infringe.'

The U.S. Supreme Court declined to hear the copyright infringement case brought by television networks and Hollywood studios against Cablevision over technology that allows viewers to record TV shows.

IP lawyers had hoped that Cable News Network Inc. v. CSC Holdings Inc., 08-448, would give the Supreme Court a chance to decide whether viewers had a fair use right to record and view programs that are stored on the cable company's servers. But even before the case made it up to the High Court, the juiciest issues had been removed from the case.

The television networks decided only to press on the issue of the cable company's alleged direct infringement ' not contributory infringement, which would have roped the viewers' rights into the case. Cablevision also stipulated that it wouldn't raise the fair use defense.

Without those issues, the solicitor general recommended that the Supreme Court not hear the case. “That artificial truncation of the possible grounds for decision would make this case an unsuitable vehicle for clarifying the proper application of copyright principles to technologies like the one at issue here,” wrote U.S. Solicitor General Elena Kagan in a brief in May.

The television networks sued, alleging that Cablevision was infringing their copyrights by making copies on their servers at customers' behests. After the networks won at the district court in New York, the U.S. Court of Appeals for the Second Circuit tossed the ruling, finding that the company's DVR was no different than a VCR. The Cartoon Network LP v. CSC Holdings Inc. , 536 F.3d 121 (2d Cir. 2008).

“I'm not surprised that cert was not granted, given the narrow issue that was going up,” says Neil Smith, an IP lawyer at Sheppard, Mullin, Richter & Hampton who was not involved in the case.