Cartoon Network LP v. CSC Holdings, Inc.: Remote-Storage Digital Video Recorders and Copyright Law
Cartoon Network LP v. CSC Holdings, Inc.:
Remote-Storage Digital Video Recorders and
October 23, 2008
Kate M. Manuel
American Law Division
Cartoon Network LP v. CSC Holdings, Inc.: Remote-
Storage Digital Video Recorders and Copyright Law
The time-shifting technologies that consumers use to record television programs
as they are broadcast and to play them back later have long prompted allegations of
copyright infringement from broadcast networks and movie studios. However, as the
technologies have evolved and lawsuits against their manufacturers have been
resolved, the nature of the copyright claims has changed. Most recently, broadcasters
and studios sued Cablevision over its proposed remote-storage digital video
recording service, which would allow consumers to record and play back broadcast
content using Cablevision’s facilities instead of in-home devices. Because the
recordings were made at Cablevision’s facilities and the playbacks were transmitted
from there, content owners claimed direct infringement of their reproduction and
public performance rights. Previously, copyright holders had claimed contributory
or vicarious infringement by manufacturers of recording devices.
In 2007, a federal district court in New York found for the plaintiffs and
enjoined Cablevision from operating its proposed recording service, holding that (1)
the unauthorized buffer and playback copies made when recording broadcast
programming were infringing reproductions, and (2) the unauthorized transmissions
of playback copies to consumers were infringing public performances.
In 2008, the U.S. Court of Appeals for the Second Circuit reversed the district
court. It found that neither buffer nor playback copies infringed content owners’
reproduction rights. According to the appellate court, the buffer copies were non-
infringing because they were embodied too briefly for fixation to occur and to count
as “copies” under the Copyright Act. The playback copies were similarly non-
infringing because Cablevision’s customers, not Cablevision, created them.
Additionally, the Second Circuit found that Cablevision’s transmission of playback
copies to consumers did not infringe content owners’ public performance rights. The
transmissions were non-infringing because Cablevision made individualized copies
of every television show for each recording customer and customers could view only
Beyond clarifying the nature of infringing reproductions and public
performances under the Copyright Act, the Second Circuit’s Cartoon Network
decision paves the way for Cablevision to market the first-ever remote-storage digital
video recording service. This effect of the Cartoon Network decision could
potentially be undercut by the parties’ failure to allege contributory infringement,
vicarious infringement, or fair use, as well as by the fact that the decision is binding
precedent only within the Second Circuit and by the content owners’ appeal of the
Second Circuit’s decision to the Supreme Court. However, to the degree that courts
in other circuits follow the Second Circuit, they may view remote-storage digital
video recorders as successors to video cassette recorders and set-top-storage digital
video recorders, protecting manufacturers of the latest time-shifting technologies
from liability for copyright infringement.
Time-Shifting Technologies and Litigation..........................1
STS-DVRs and the ReplayTV Litigation .......................2
The Cartoon Network Holdings...................................5
Reproduction under the Copyright Act: The Meaning of
“Fixation” and “Copies”................................6
Reproduction under the Copyright Act: The Agent of
Copying with RS-DVRs................................8
Public Performance under the Copyright Act: The Agent of
Transmission with RS-DVRs and the Meaning of “Publicly”...10
Effects of the Cartoon Network Decision..........................12
List of Tables
Table 1. Comparison of Time-Shifting Technologies......................5
Cartoon Network LP v. CSC Holdings, Inc.:
Remote-Storage Digital Video Recorders
and Copyright Law
In Cartoon Network LP v. CSC Holdings, Inc., a three-judge panel of the U.S.
Court of Appeals for the Second Circuit held that Cablevision’s proposed remote-
storage digital video recording (RS-DVR) service did not directly infringe the
reproduction or public performance rights of those holding copyrights in the recorded
materials.1 Under the Copyright Act of 1976, copyright holders have exclusive rights
to reproduce their works in copies and to perform motion pictures or other
audiovisual works publicly.2 Network broadcasters, cable broadcasters, and movie
studios argued that Cablevision’s proposed service would infringe these rights by
creating unauthorized, unlicensed, and therefore infringing buffer and playback3
copies of their programs and transmitting the playback copies to customers.
Although the U.S. District Court for the Southern District of New York agreed with
the copyright holders and permanently enjoined Cablevision from operating its RS-
DVR service on March 22, 2007,4 the Second Circuit reversed on August 4, 2008.
The Second Circuit’s decision clarifies the nature of infringing reproduction and
public performance under the Copyright Act, and could pave the way for commercial
introduction of the latest technology for time-shifted viewing of television
Time-Shifting Technologies and Litigation
RS-DVR is the latest technology enabling consumers to “time shift” televison
programming by recording content at the time it is broadcast for future viewing.
Video cassette recorders (VCRs) and set-top storage DVRs (STS-DVRs) offer
similar capabilities. However, each of these technologies operates differently and has
been subject to differing allegations of copyright infringement. Because the various
time-shifting technologies and the cases resolving copyright claims against them
underlie the Cartoon Network decision, they are briefly reviewed here.
1 Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008), rev’g
Twentieth Century Fox Film Corp. v. Cablevision Sys. Corp., 478 F. Supp. 2d 607, 624
(S.D.N.Y. 2007). CSC Holdings is Cablevision’s operating company. Company Overview:
CSC Holdings, Inc., Hoover’s (2008), available at [http://www.hoovers.com/csc-holdings/
— ID__108770 — /free-co-factsheet.xhtml].
2 17 U.S.C. § 106 (1) & (4).
3 Cartoon Network, 536 F.3d at 124. Copyright holders involved in the Cartoon Network
litigation were the Cartoon Network, CNN, Twentieth Century Fox, Universal City Studio,
Paramount, Disney, CBS, ABC, and NBC. Id. at 121-22.
4 Twentieth Century Fox, 478 F. Supp. 2d at 624.
VCRs and the Sony Decision. A VCR is a device that consumers connect
to their television sets in order to record audio and video content onto magnetic tape5
for future playback. When Sony began selling its Betamax VCR in the 1970s,
Universal Studios and Walt Disney sued Sony for contributory copyright6
infringement. Universal and Disney had licensed broadcasters to transmit their
copyrighted programs to the public, but had not authorized or licensed Sony or7
members of the general public to make copies of them. Universal and Disney
worried that consumers’ unauthorized, unlicensed copying could harm them by
diminishing the audience for original broadcasts and thereby decreasing ratings and
In their lawsuit against Sony, Universal and Disney argued (1) that consumers
infringed the companies’ exclusive rights to reproduce their programming by
recording TV programs with the Betamax VCR and (2) that Sony should be liable for9
consumers’ infringement because it made the Betamax available to consumers. The
U.S. Supreme Court disagreed, however. The Court first found that consumer
recording of broadcast television was a non-infringing fair use because consumer
time-shifting of television viewing did not demonstrably harm content owners, whose
shows were still watched, albeit at different times than their scheduled broadcast
times.10 The Court further found that Sony was not liable for contributory
infringement merely for manufacturing or selling the Betamax because “the sale of
copying equipment ... does not constitute contributory infringement if the product is11
widely used for legitimate, unobjectionable purposes.”
STS-DVRs and the ReplayTV Litigation . In the early 2000s, STS-DVRs
began to replace VCRs. STS-DVRs resemble VCRs in that they are devices that
consumers purchase from manufacturers, install in their homes, connect to their
televisions, and use to record broadcasts for later viewing. Their main difference
from VCRs is that they record broadcasts in digital rather than analog format.12
Digital recording brought two other changes that concerned content owners, though.
Digital recording and replay devices can be programmed to automatically skip
television commercials.13 They can also make and distribute perfect digital copies
5 How VCRs Work, How Stuff Works (2008), available at
6 Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984).
7 Id. at 447.
8 Id. at 452-53.
9 Id. at 420.
10 Id. at 447-55.
11 Id. at 442.
12 How DVRs Work, How Stuff Works (2008), available at
[http://electronics.howstuffworks .com/dvr .htm] .
13 Complaint, Paramount Pictures Corp. v. ReplayTV, Case Number:
of broadcast content.14 Both these features of STS-DVRs suggested, at least to
broadcasters and movie studios, that the harm caused by unauthorized, unlicensed
consumer recording with STS-DVRs was greater than that with VCRs. Thus, when
broadcasters and movie studios sued early STS-DVR manufacturers ReplayTV and
SonicBlue alleging contributory and vicarious copyright infringement, they hoped for
different judicial findings on (1) whether consumers’ time-shifting recordings were
infringing and (2) whether the manufacturers of consumers’ recording devices were
liable for consumers’ conduct.15 Consumers intervened in the case to establish that
their use of STS-DVRs was non-infringing,16 and the parties eventually settled
without a judicial decision addressing whether STS-DVRs, like their VCR
predecessors, are non-infringing time-shifting technologies.17
Cablevision’s RS-DVRs. In 2006, Cablevision, a telecommunications and
entertainment company, announced plans to add RS-DVR service to the array of
high-speed Internet, digital cable TV, and digital telephone services that it offers to
consumers.18 RS-DVRs differ from traditional STS-DVRs because consumers do not
need to install devices or wiring in their homes to record or store broadcast content.
They need only a remote control and a set-top receiver to select programming for
recording and to play it back. All recordings are made and stored using the facilities
of the RS-DVR provider, a technical development that analysts projected could19
double the market for DVRs.
Cablevision’s RS-DVR service, in particular, is designed so that each user
creates and views separate copies of each television program that Cablevision20
broadcasts. Cablevision takes the stream of data — digitally representing the
14 Id. at ¶ 14.
15 Id. at ¶¶ 57-72. Plaintiffs’ claim of contributory infringement was premised on the
allegations that ReplayTV and SonicBlue (1) knew, or had reason to know, that consumers
violated plaintiffs’ reproduction and distribution rights when consumers used STS-DVRs
to make unauthorized copies of plaintiffs’ shows and (2) actively participated in consumers’
infringement by inducing, causing, or contributing to it by making STS-DVRs available to
consumers. Plaintiffs’ claim of vicarious infringement was similarly premised on the
allegations that defendants (1) had direct financial interests in consumers’ infringement,
because they sold STS-DVRs to consumers, and (2) were able to control consumers’
infringing recording, even if they did not know of or directly participate in it, because they
determined the technological capabilities of the devices they manufactured.
16 Newmark v. Turner Broad. Network, 226 F. Supp. 2d 1215, 1223 (2002) (granting
consolidation of consumers’ suit with the ReplayTV suit).
17 Final Judgment, Paramount Pictures Corp. v. ReplayTV, Case Number: CV 01-09358
FMC (Ex) (S.D.N.Y. Aug. 25, 2006), at ¶ 1 (granting dismissal by stipulation of the
18 Cablevision, Products and Services, 2008, available at [http://www.cablevision.com/].
19 See, e.g., Larry Neumeister, Court Win for Remote Storage DVR, The Seattle Times, Aug.
20 See, e.g., Declaration of Stephanie Mitchko in Support of Defendants’ Motion for
Summary Judgment, Twentieth Century Fox Film Corp. v. Cablevision Sys. Corp. (C.D.
broadcast content — and splits it into two streams as “live” transmission begins.21
The first stream is transmitted to Cablevision subscribers in real time, as the show
airs.22 The second stream is sent to a buffer, or an area of computer memory used to
store data temporarily. The buffer retains up to 1.2 seconds of each program at a time
while Cablevision’s computers determine whether any customers requested recording
of the program.23 If a customer requested recording, the second stream is sent to a
second buffer, from which the program is copied to the customer’s hard-drive storage
space on Cablevision’s computers for future playback.24 The customer can request
that this recording be transmitted for viewing at any time after the program’s
Cablevision had licenses with the broadcasters and networks allowing it to
transmit their copyrighted programming to consumers “live.”26 It did not have
licenses to make buffer or playback copies, or to transmit playback copies to
Corporations owning copyrights in broadcast content argued that Cablevision’s
RS-DVR service would infringe their reproduction and public performance rights by
making unauthorized and unlicensed buffer and playback copies of television
programs and by engaging in unauthorized and unlicensed transmission of playback
copies to customers.27 They sued to enjoin Cablevision’s operation of its RS-DVR
service.28 Although Cablevision’s customers were engaging in an activity — time-
shifted viewing of broadcast television — protected under Sony, the technologies and
legal claims involved differed from those in earlier VCR and STS-DVR cases.
Cablevision did not sell devices to consumers that they used to copy and play back
broadcast content in their homes; rather, it used its facilities to record, store, and
transmit playback copies for consumers. Additionally, the Cablevision plaintiffs
alleged direct copyright infringement, or unlawful activity by Cablevision itself, not
Cal. 2006), at ¶ 29 (“[I]f 1000 customers elect to record the February 25th 9:00 p.m. showing
of Desperate Housewives, 1000 separate and distinct copies of that specific showing are
made, each copy uniquely associated by identifiers with the set-top box of the customer who
made the copy.”).
21 Cartoon Network, 536 F.3d at 124.
26 Id. at 125.
27 Id. at 124.
contributory or vicarious infringement, as in Sony and Paramount.29 Cablevision
further agreed not to assert a fair-use defense in the litigation.30
Table 1. Comparison of Time-Shifting Technologies
TechnologyFeaturesInfringementOutcome of Litigation
VCR* Set-top boxes* Contributory* Supreme Court held that
purchased frominfringement of thetime-shifting consumer
manufacturers,reproduction right,recording with a VCR is non-
installed and operatedalleged against VCRinfringing
in-homemanufacturer* Supreme Court held that
* Analog copiesthe manufacturer is not liable
for devices with substantial
STS-DVR* Set-top boxes* Contributory* Ninth Circuit dismissed
purchased frominfringement of thewithout judgment on the
installed and operateddistribution rights,
in homealleged against STS-
* Digital copiesDVR manufacturer
infringement of the
alleged against STS-
Cablevision’s* Consumers record* Direct infringement* Second Circuit held that
RS-DVRand save broadcastof the reproductionbuffer copies lasting 1.2
programming onand publicseconds do not infringe the
Cablevision’sperformance rights,reproduction right
equipmentalleged against RS-* Second Circuit held that
* Digital copiesDVR manufacturercustomers make the playback
copies with RS-DVRs
* Second Circuit held that
transmission of playback
copies does not infringe the
public performance right
Source: Congressional Research Service
The Cartoon Network Holdings
The district court in the Cartoon Network case sided with the copyright holders,
finding that unauthorized buffer and playback copies were infringing reproductions
and that unauthorized transmissions of playback copies to RS-DVR customers were
infringing public performances.31 The circuit court disagreed, however, because of
its interpretation of the nature of infringing reproductions and public performances
under the Copyright Act.32
Reproduction under the Copyright Act: The Meaning of “Fixation”
and “Copies”. The Copyright Act grants copyright owners the exclusive right “to33
reproduce the copyrighted work in copies.” The word “reproduce” is not defined
within the act, but the word “copies” is.34 Copies are “material objects, other than
phonorecords, in which a work is fixed by any method now known or later
developed, and from which the work can be perceived, reproduced, or otherwise35
communicated, either directly or with the aid of a machine or device.” The act
further defines the term “fixed,” used within the definition of “copies,” as follows:
A work is “fixed” in a tangible medium of expression when its embodiment in
a copy or phonorecord, by or under the authority of the author, is sufficiently
permanent or stable to permit it to be perceived, reproduced, or otherwise
communicated for a period of more than transitory duration. A work consisting
of sounds, images, or both, that are being transmitted, is “fixed” for purposes of
this title if a fixation of the work is being made simultaneously with its36
The meanings of “embodiment” and “for a period of more than transitory duration”
are not specified within the act but are key to the definition of “fixation.”37 In short,
fixation requires embodiment for a more-than-transitory duration, and without
fixation, there cannot be “copies” under the Copyright Act or infringing reproduction.
The first claim of the Cartoon Network plaintiffs was that Cablevision infringed
their copyrights by reproducing their programs when making unauthorized,
unlicensed buffer copies prior to recording content for Cablevision customers.38
Embodiment was not at issue, given the facts of the case, because “every second of
an entire work [was] placed, one second at a time, in the buffer,” from which it was39
copied. Whether the embodiment was for a period of more than transitory duration
31 Twentieth Century Fox, 478 F. Supp. 2d at 621-22, 624.
32 Cartoon Network, 536 F.3d at 126-40.
33 17 U.S.C. § 106(1).
34 17 U.S.C. § 101.
37 See, e.g., Melville B. Nimmer & David Nimmer, 2 Nimmer on Copyright § 8.02 (2006)
(discussing embodiment and duration in relation to the reproduction right); U.S. Copyright
Office, DMCA Section 104 Report 109-114 (2001), available at [http://www.copyright.gov/
38 Cartoon Network, 536 F.3d at 127-30; Twentieth Century Fox, 478 F. Supp. 2d at 621-22.
39 Cartoon Network, 536 F.3d at 129 (noting that embodiment in a medium occurs whenever
a work is capable of being copied from that medium for any amount of time).
was disputed, however.40 Both the plaintiffs and the district court, which found for
the plaintiffs, relied upon case law suggesting that embodiment per se suffices for
fixation.41 The plaintiffs and the district court further relied upon a report from the
U.S. Copyright Office stating that any duration requirement for fixation is met
“[u]nless a reproduction manifests itself so fleetingly that it cannot be copied.”42
Cablevision, in contrast, argued that its buffer copies did not constitute “copies”
under the Copyright Act because they were not fixed and thus were not embodied for
a sufficient time.43 Cablevision emphasized that its buffer copies existed for “no ...
more than 1.2 seconds before being automatically overwritten.”44 Cablevision further
argued that even assuming fixation, any “copies” were “otherwise de minimis”
because they involved no more than 1.2 seconds of broadcast content.45
The Second Circuit found for Cablevision, holding that embodiment in a buffer
for 1.2 seconds fails to qualify as embodiment for a more-than-transitory duration.46
According to the Second Circuit, because embodiment was not for a more-than-
transitory duration, no fixation occurred; no “copies” were made under the Copyright
Act; and Cablevision engaged in no infringing reproduction with its buffer copies.47
The Second Circuit thus gave its answer to a question long discussed by
copyright scholars: how long must a work be embodied for fixation to occur?48
However, its answer may diverge from that of other federal circuits, some of which
have indicated that copies existing in random access memory (RAM) for seconds or
minutes are fixed and thus meet any duration requirement for embodiment.49 In MAI
Systems Corporation v. Peak Computer, Inc., for example, the Ninth Circuit found
40 Id. at 128; Twentieth Century Fox, 478 F. Supp. 2d at 621-22.
41 Twentieth Century Fox, 478 F. Supp. 2d at 621-22.
42 Id. (“[T]emporary copies ... are generally ‘fixed’ within the scope of the copyright
owner’s right of reproduction, so long as they exist for a sufficient amount of time to be
capable of being copied, perceived or communicated.”).
43 Id. at 621.
44 Cartoon Network, 536 F.3d at 130.
45 Twentieth Century Fox, 478 F. Supp. 2d at 621.
46 Cartoon Network, 536 F.3d at 129-30.
48 See, e.g., Stefan Hubanov, The Multifaceted Nature and Problematic Status of Fixation
in U.S. Copyright Law, 11 Intell. Prop. L. Bull. 111 (2006); Douglas J. Masson, Fixation
on Fixation: Why Imposing Old Copyright Law on New Technology Will Not Work, 71 Ind.
L. J. 1049 (1996).
49 See, e.g., Stenograph L.L.C. v. Bossard Assoc., Inc., 144 F.3d 96, 100 (D.C. Cir. 1998);
Triad Sys. Corp. v. Southeastern Express Co., 64 F.3d 1330, 1335 (9th Cir. 1995); MAI
Systems Corp. v. Peak Computer, Inc., 991 F.2d 511, 518 (9th Cir. 1993); Marobie-FL., Inc.
v. Nat’l Ass’n of Fire Equip. Distribs., 983 F. Supp. 1167, 1177-78 (N.D. Ill. 1997).
Because RAM is a “volatile” form of computer memory, whose content is lost if power is
switched off and which can be overwritten, it is like a buffer in temporarily storing data.
How RAM Works, How Stuff Works (2008), available at
[http://computer.howstuffworks .com/ram3.htm] .
that a computer company created a “copy,” for purposes of the Copyright Act, when
its employee loaded copyrighted software into RAM for a very brief time in order to
view system error logs and diagnose problems while repairing a computer.50 The
Second Circuit attempted to distinguish cases such as MAI Systems by noting that
copies in RAM often exist for minutes as opposed to seconds and by reading prior
cases to say that loading content into RAM may — but does not necessarily — result
in infringing reproduction.51 To the degree that other circuits disagree with the
Second Circuit’s interpretation of their cases here, though, Cartoon Network could
presage a split of opinion within the federal district courts on the duration
requirement for fixation.52
The Second Circuit did not reach Cablevision’s suggestion that “any copies
produced by buffering data would be de minimis.”53 Its failure to do so leaves open
the possibility that future courts could find that buffer copies lasting longer than 1.2
seconds meet the duration requirement for fixation without being infringing
Reproduction under the Copyright Act: The Agent of Copying with
RS-DVRs. The Cartoon Network plaintiffs further claimed that Cablevision
infringed their reproduction rights by creating unauthorized and unlicensed playback54
copies and saving them on Cablevision hard drives for future viewing by customers.
Whether these copies violated broadcasters’ exclusive rights to reproduce their works55
was not at issue here. Rather, the parties and the courts focused upon Cablevision’s
role in creating the playback copies.56 This focus resulted from the fact that the
plaintiffs claimed direct infringement by Cablevision, and liability for direct
infringement exists only when the defendants’ own conduct “violates any exclusive57
rights of the copyright owner.” If the defendants’ own conduct does not violate an
50 MAI Sys., 911 F.2d at 518.
51 Cartoon Network, 536 F.3d at 128 (noting that the program in MAI was in RAM for seven
minutes and stating “[w]e construe MAI Systems and its progeny as holding that loading a
program into a computer’s RAM can result in copying”).
52 A recent District of Arizona case could allow the Ninth Circuit to reestablish the view that
the time necessary for embodiment is per se more than transitory. See MDY Indus., LLC
v. Blizzard Ent., Inc., 2008 U.S. Dist. LEXIS 53988 (D. Az. July 14, 2008), at *11 (relying
on MAI Systems in concluding that a copy stored in RAM for at least several seconds is
sufficiently fixed to constitute a “copy” and an infringing reproduction under the Copyright
53 Cartoon Network, 536 F.3d at 130.
54 Twentieth Century Fox, 478 F. Supp. 2d at 617-21.
55 Cartoon Network, 536 F.3d at 130.
56 Cartoon Network, 536 F.3d at 130-33; Twentieth Century Fox, 478 F. Supp. 2d at 617-21.
By comparison, there was no dispute as to whether Cablevision made the buffer copies. See
Cartoon Network, 536 F.3d at 127.
57 17 U.S.C. § 501(a). Defendants’ violation need not be knowing or intentional. Copyright
infringement is a strict liability offense in that persons engaging in unlawful conduct are
exclusive right, there can be no direct liability.58 There can only be contributory or
vicarious liability, or liability for any infringing conduct by third parties, which the
parties had agreed not to assert here.59 The key question thus became whether
Cablevision or its customers made the playback copies.
The plaintiffs argued, and the district court agreed, that Cablevision made the
copies and should be directly liable for infringement because the copies were
unauthorized and unlicensed.60 Technological differences between VCRs, STS-
DVRs and RS-DVRs were key to this argument.61 The plaintiffs claimed that RS-
DVRs differed from earlier time-shifting technologies because they were not stand-
alone devices that consumers purchased and installed in their homes.62 Relatedly,
plaintiffs claimed that RS-DVRs were different because Cablevision had an “ongoing
participation” in the recording process because customers repeatedly transmitted
recording requests to Cablevision’s systems, which made and stored desired copies
for them.63 These differences convinced the district court that Cablevision’s
proposed RS-DVR offering was more like a Video-on-Demand (VOD) service, such
as pay-per-view, which licenses all content it transmits and whose programs cannot
be recorded on DVRs,64 than a VCR device, used for recording broadcast television.65
The district court thus found that Cablevision should be directly liable for copyright
infringement.66 Cablevision had argued that it (1) merely provided copying
equipment on its premises for customer use, like a store with customer-operated
photocopiers, and (2) its customers made the playback copies because their requests
initiated the copying.67
Because the Second Circuit saw no fundamental difference between RS-DVRs
and VCRs, it held that Cablevision’s customers made the unauthorized and
liable even without having specific knowledge or intent. Even strict liability offenses,
however, require volitional conduct by the defendant for a finding of culpability. Cartoon
Network, 536 F.3d at 133.
58 Cartoon Network, 536 F.3d at 130.
59 Id. at 124.
60 Twentieth Century Fox, 478 F. Supp. 2d at 618.
61 Id. at 618 (“[A]part from their time-saving functions, the RS-DVR and the VCR have little
62 Id. (“The RS-DVR does not have that stand-alone quality.”).
63 Id. at 619.
64 See, e.g., RCN Corporation, DVR User Manual: Frequently Asked Questions, 2008,
available at [http://www.rcn.com/cabletv/digital-video-recorder/faqs.php].
65 Twentieth Century Fox, 478 F. Supp. 2d at 611, 619-20. The court further noted that
Cablevision’s RS-DVR system was developed from a modified VOD platform.
66 Id. at 621.
67 Id. at 617-18.
unlicensed playback copies.68 The fact that customer actions — such as selecting
shows for recording via remote controls and entering the commands to record —
were necessary precursors to the making of playback copies by Cablevision’s system
was key to this holding.69 The Second Circuit further differentiated between (1)
selling access to systems that automatically produce copies on command and (2)
manually operating copying devices and selling products made using the devices:
In determining who actually “makes” a copy, a significant difference exists
between making a request to a human employee, who then volitionally operates
the copying system to make the copy, and issuing a command directly to a
system, which automatically obeys commands and engages in no volitional70
Public Performance under the Copyright Act: The Agent of
Transmission with RS-DVRs and the Meaning of “Publicly”. In addition
to their claim of infringing reproduction, the plaintiffs also argued that Cablevision
infringed their copyrights by publicly performing their motion pictures and other
audiovisual works.71 The Copyright Act specifies that to “perform” a motion picture
or other audiovisual work means “to show its images in any sequence or to make the
sounds accompanying it audible.”72 The act further specifies that “publicly,” when
used in reference to performing 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 the 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
are in the same place or in separate places and at the same time or different73
The plaintiffs argued that Cablevision’s unauthorized and unlicensed
transmission of playback copies to RS-DVR customers was infringing under these
68 Cartoon Network, 536 F.3d at 133.
69 Id. at 131 (“[The] person who actually presses the button to make the recording ... supplies
the necessary element of volition.”).
71 Id. at 134-39; Twentieth Century Fox, 478 F. Supp. 2d at 622-24. The Copyright Act
defines “motion pictures” as “audiovisual works consisting of a series of related images
which, when shown in succession, impart an impression of motion, together with
accompanying sounds, if any.” 17 U.S.C. § 101. It further defines “audiovisual works” as
“works that consist of a series of related images which are intrinsically intended to be shown
by the use of machines, or devices such as projectors, viewers, or electronic equipment,
together with accompanying sounds, if any, regardless of the nature of the material objects,
such as films or tapes, in which the works are embodied.” Id.
72 17 U.S.C. § 101.
definitions of “performance” and “publicly.”74 According to the plaintiffs, the
transmissions were (1) performances because they showed the images comprising the
programming in the same order in which the images were originally broadcast and
(2) public because numerous people were capable of receiving the same broadcast
content in different places at different times.75 Cablevision did not contest that the
transmissions resulted in the performance of plaintiffs’ copyrighted works.76 Rather,
it argued that Cablevision’s customers — not Cablevision — initiated the
performances because the RS-DVR system only sent the recorded programs to
consumers upon their request for playback.77 Cablevision also argued that any
performance, regardless of who initiated it, was not public because each customer
viewed “a distinct copy of a program uniquely associated with one customer’s set-top
box and intended for that customer’s exclusive viewing in his or her home.”78
The district court disagreed with Cablevision on both who initiated the
performance of playback copies transmitted to RS-DVR customers and what makes
a performance public.79 The district court held that Cablevision was the agent of the
performances because Cablevision “actively participated in the playback process”
when its computerized system transmitted the playback copies to consumers upon
their request.80 It further found that the customers’ participation in the transmission
of the playback copies — their use of remote controls to select previously recorded
content for viewing — was “too passive” for them to be the agents of the
performance.81 Finally, the district court held that the performances were public
because multiple Cablevision customers received transmissions of the same shows.82
The Second Circuit reversed the district court on the question of whether
unauthorized transmission of playback copies to RS-DVR customers constituted
74 Cartoon Network, 536 F.3d at 134.
76 Id. (“No one disputes that RS-DVR playback results in the transmission of a performance
of a work.”).
78 Id. at 138; see also Twentieth Century Fox, 478 F. Supp. 2d at 622.
79 Twentieth Century Fox, 478 F. Supp. 2d at 622-24.
80 Id. at 622. The district court specifically likened Cablevision’s conduct in transmitting
the playback copies to customers to that of the video store owners in Columbia Pictures
Industries, Inc. v. Redd Horne, Inc. In Columbia Pictures, the Third Circuit held that video
store owners directly infringe the public performance rights in copyrighted works when they
rent videos for customers to view in private, restricted-access booths within their stores.
The defendants in Columbia Pictures placed tapes into VCR machines at the front of the
store and transmitted the content of the tapes to separate viewing rooms within the store,
where the tapes could be seen only by those who rented them. Columbia Pictures Indus. v.
Redd Horne, Inc., 749 F.2d 154, 157 (3d Cir. 1984).
81 Twentieth Century Fox, 478 F. Supp. 2d at 622.
82 Id. at 622-23.
infringing public performances.83 The Second Circuit did so without deciding
whether Cablevision or its customers initiated the performance.84 Rather, the court
held that the performance was not “public” because different RS-DVR customers
received individualized playback copies of the same television show.85 The court
found it significant that there was not a single playback copy transmitted to all
subscribers who selected a particular show for recording and replay.86 To the
contrary, Cablevision ensured that each subscriber received a copy of the show
viewable only on his or her set-top device.87 This limitation, according to the Second
Circuit, ensured that both factors used in determining whether a performance is
public were unmet here: (1) the identity of the transmitter differed because the
transmissions were made from different hard-drive storage spaces in response to
commands from different customer remote-control devices, and (2) the source
material of the transmission differed because the system saved individual copies of
a program for each customer who requested recording of that program.88 The Second
Circuit’s focus on this limitation does, however, raise questions about whether RS-
DVRs must use Cablevision’s allegedly “inefficient” method of recording content —
which entails making and storing potentially thousands of copies of the same content
— in order to avoid infringing the reproduction right.89
Effects of the Cartoon Network Decision
The Second Circuit’s decision clears the way for Cablevision to deploy its
proposed RS-DVR service commercially.90 By doing so, the decision protects the
latest in a line of technologies — stretching from VCRs to STS-DVRs to RS-DVRs
— that allow consumers to time-shift their viewing of broadcast television. A few
questions remain after the Cartoon Network decision. First, the Cartoon Network
plaintiffs and defendants declined to pursue claims relating to contributory
infringement, vicarious infringement, or fair use.91 Had they done so, the outcome
on one or more of the three issues decided might have differed. Second, the Cartoon
Network decision is a binding precedent only in the Second Circuit. Other federal
83 Cartoon Network, 536 F.3d at 134-39.
84 Id. at 134.
87 Id. Cablevision transmits playback copies into all homes in the same “node,” or cluster
of subscribers, as the customer for whom they are made, but only the customer for whom
the copies are made has the necessary “key” to decrypt and view them. Twentieth Century
Fox, 478 F. Supp. 2d at 615-16.
88 Cartoon Network, 536 F.3d at 138.
89 Network DVR Matter Goes to Court, The Online Reporter, May 27, 2006, at 8 (describing
Cablevision’s recording system as “inefficient”).
90 See, e.g., Cartoon Network, 536 F.3d at 140 (lifting the district court’s injunction);
Deborah Yao, Cablevision’s Great DVR in the Sky, TechNewsWorld, Sept. 23, 2008 (noting
that the Cablevision RS-DVR service will be available in early 2009).
91 Cartoon Network, 536 F.3d at 124.
circuits could potentially reach different conclusions on the nature of infringing
reproductions and public performances under the Copyright Act even when
confronted with identical facts.92 Additionally, the Cartoon Network plaintiffs have
petitioned the Supreme Court for review of the Second Circuit’s decision.93 That
petition is pending. Despite these lingering questions, however, courts that find the
logic of Cartoon Network persuasive may find, as the Second Circuit did, that
consumer recording of broadcast television using technologies outside the home is
as protected as recording of broadcast television using technologies inside the home
is under Sony.
The Second Circuit’s decision in Cartoon Network represents the latest in the
continuing litigation between parties holding copyrights in broadcast programming
and manufacturers of recording devices. Cartoon Network involved RS-DVRs and
claims of direct infringement, unlike earlier cases involving VCRs or STS-DVRs and
claims of contributory or vicarious infringement. Although the district court found
for the plaintiffs and enjoined Cablevision from operating its proposed RS-DVR
service, the Second Circuit reversed. The Second Circuit held that (1) the buffer
copies created prior to recording broadcast content in Cablevision’s RS-DVR system
were non-infringing because they did not exist long enough for “fixation” under the
Copyright Act; (2) the playback copies created on Cablevision’s computers in its RS-
DVR system did not make Cablevision directly liable for infringement because
Cablevision’s customers created them; and (3) the transmission of playback copies
to customers was non-infringing because it was not a public performance. The
Second Circuit’s decision thus allows Cablevision to offer its proposed RS-DVR
system commercially and clarifies the nature of infringing reproduction and public
performance under the Copyright Act.
92 If the Ninth Circuit were to affirm its precedents suggesting that the time required for
embodiment suffices to meet any duration requirements for fixation, a split of opinion
between the Second and Ninth Circuits would exist. See, e.g., MAI Sys., 991 F.2d at 518;
MDY Indus., LLC, 2008 U.S. Dist. LEXIS 53988.
93 See, e.g., Petitions Filed Challenging Federal Circuit Rulings on Computer-Implemented
Patents, Patent, Trademark & Copyright Law Daily, Oct. 22, 2008.