The district court held that Dish Anywhere did not infringe Fox's public performance right because the service only could be used by subscribers to get access to their own recordings.
The court held that PTAT did not directly infringe Fox's reproduction right because Dish did not engage in a volitional conduct.
[4] According to the courts' previous holdings,[1][3] and the summary judgment decision[2] the factual background was as follows: On May 24, 2012, Fox sued Dish for copyright infringement and breach of contract.
This technology allows the user watch television on their laptops, tablets or smartphones via a remote access to the recorded programing.
PrimeTime Anytime (PTAT) is the Dish service, available since March 15, 2012, that allows subscribers to automatically record all prime time programs from the four major broadcasting networks (ABC, CBS, NBC, and Fox).
Regardless of AutoHop function, the Hopper retained all commercials until the TV program would be deleted when its retention period had expired.
[2] On November 7, 2012, the district court denied Fox's motion for preliminary injunction finding that 1) PTAT and AutoHop neither infringed on the copyright nor committed breach of contract; and 2) although QA copies constituted copyright infringement and breach of contract, the harm from the copies was not irreparable.
The Court found that while Dish was substantially involved in the copying process on the users' PTAT, the involvement was not different from precedent non-infringement cases of Cartoon Network, LP v. CSC Holdings, Inc. and CoStar v. LoopNet, in which prior courts judged that the individual users, and not the service providers were liable for infringing copies.
The Court denied Dish's argument because the purpose and the effects on the economy of QA copies were fundamentally different from those of reverse engineering.
The Court noted that the amount of money for licensing to other companies would show that the harm resulted from the QA copies was also compensable.
Citing Sony Corp. of America v. Universal City Studios, Inc., the Court concluded that the users' copying at home for the time shift purpose did not infringe Fox's copyright.
The district court held that Dish Anywhere does not infringe Fox's public performance right because the service can only be used by subscribers to get access to their own recordings.
The court ruled that PTAT and Hopper Transfers do not directly infringe Fox's reproduction right because Dish does not engage in a volitional conduct.
The district court referred to its prior decision and deemed again as too speculative the potential market harm alleged by Fox for the use of PTAT.
The district court denied the summary judgment in this point because considered that there was a triable issue of fact as to the damages flowing from the breach.
The reasonable amount of royalties that Dish should pay for the period that used QA copies is a triable issue of fact.
[5] Annette Hurst, an attorney for Dish said that the decision unequivocally showed that advertisements were a financing mechanism, but they were not part of the copyrighted work.
[6] Additionally, Corynne McSherry, an attorney of the Electric Frontier Foundation, which had noted an amicus brief to the Ninth Circuit, made a statement that the holding was "a victory for fair use and consumer choice," and ensures that "technology makers can develop and offer new tools and services without fear of crippling liability where those tools and services are capable of substantial non-infringing uses.
"[7] However, David Singer, an attorney for Fox, and other legal professionals pointed out that the result might be changed in succeeding trials because the Ninth Circuit applied a "deferential standard of review" to the request for a preliminary injunction, which required the plaintiff a very high bar to be granted.
[6][8][9][10] Fox spokesman Scott Grogin said the company welcomed Gee's contract rulings, and was disappointed by her copyright findings.
[11][12] Mitchell Zimmerman, Intellectual Property Counsel at Fenwick West LLP expressed that "[t]he ruling included mostly wins, but some losses, for DISH with implications for other online services that enable time- and space-shifting by end-users."
He referred to the relationship of this decision with Aereo, he explains that Areo decision "caused controversy over whether the Supreme Court had sub silentio overturned a long line of cases holding it is not direct copyright infringement to provide an automated technology that consumers use to engage in arguably infringing acts, when the provider does not engage in the volitional conduct causing the infringement. "
[13] CBS Corp and Walt Disney Co's ABC had settled similar litigation last year, as part of broader settlements allowing Dish to broadcast the networks' programs.
Similar litigation against Dish by Comcast Corp's NBCUniversal had been put on hold pending developments in the Fox case.
[11] Following the court's initial release of an unredacted copy of its opinion, the parties agreed to stay the case while they attempt to negotiate a settlement.
[15] The New York State Bar Association's Entertainment, Arts and Sports Law Blog, points out that this decision imply "that companies like DISH can innovate in ways that do not violate the Copyright Act.
"[16] In the same line, Akerman's Marks, Works & Secrets blog advises that "Firms seeking to rely on DISH therefore may not only need to be cognizant of the physical design of their products and services, but also may need to ensure that their licenses for copyrighted content are carefully drafted.