UK: Online Streaming Of Free-To-Air TV Channels: Why The Approach Taken By The European Court Of Justice And UK High Court In The Recent TVCatchUp Decision Is Not Being Followed In The United States

Introduction

While in the UK the law in relation to the live streaming of free-to-view television channels has been resolved, following the reference to the CJEU and the High Court decision in the TVCatchUp (TVC) litigation, in favour of the free-to-view broadcasters, the same issue is still very much a live one in the United States.

Much like TVCatchUp, Aereo and FilmOn X are technology platforms that allow subscribers to stream broadcast network programming over the Internet to their computers and mobile devices. The Networks believe that the technology infringes their exclusive right to publicly perform a work in which copyright subsists under § 106(4) of the U.S. Copyright Act, and that Aereo and FilmOn X should be required to pay the statutory retransmission fee under § 111 of the Act. Aereo and FilmOn X argue that their technology only captures broadcast programming that consumers are already entitled to free-of-charge, and gives them access to it on Internet capable devises. This was broadly the same argument unsuccessfully run by TVCatchUp in the UK litigation.

The issue in the United States turns on the definition of "public performance," and the interpretation of the "Transmit Clause" in the U.S. Copyright Act. As things stand, there is a split among district and circuit courts in the United States as to whether this sort of streaming is a lawful activity.

The Relevant Language in the U.S. Copyright Act

Public Performance Right

17 U.S.C. § 106 confers on copyright holders the exclusive right to public performance by providing that the owner of a copyright under this title has the exclusive right to do and to authorize any of the following, including: "(4) in the case of... motion pictures and other audiovisual works, to perform the copyrighted work publicly" (emphasis added).

The Act defines "perform" as "to recite, render, play, dance, or act [a work], either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible." 17 U.S.C. § 101 (emphasis added).

The same provision also states:

To perform or display 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 of a 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 or display receive it in the same place or in separate places and at the same time or at different times.

The second clause, which is analogous to the EU "communication to the public" right1, is commonly referred to as the "Transmit Clause." To "transmit" a performance or display is to communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent, and a "devise", "machine", or "process" is one now knows or later developed.

The Compulsory License Regime

U.S. Congress limited a copyright holder's exclusive rights under § 106 by adding a compulsory license scheme in § 111 for the secondary transmission of broadcast television by cable companies, and in 1998, U.S. Congress codified a separate statutory license for satellite carries under § 119. Under § 111(c): "secondary transmissions to the public by a cable system of a performance or display of a work embodied in a primary transmission made by a broadcast station licensed by the Federal Communications Commission... shall be subject to statutory licensing." Accordingly, all cable and satellite companies in the United States currently pay a license fee to retransmit broadcast television over their system.

Interpreting the Transmit Clause: Cartoon Network, LP v. CSC Holdings, Inc. ("Cablevision")

In the 2008 Second Circuit case Cablevision, broadcasters issued proceedings against a cable company over its Remote Storage DVR System ("RS-DVR"), which allowed its subscribers to record programmes onto Cablevision's hard drives, and then play back those programmes at a later time. The broadcasters argued that their copyright was infringed in the following ways: (1) brief storing of the work in the RS DVR's data buffers; (2) storing a copy of the works on the RS-DVR hard drive; and (3) transmitting the data from the Cablevision remote server to subscribers' RS-DVRs in response to a "playback request".

The Appeals Court held that: (1) the embodiments of the programmes in the buffers were not "fixed" and did not therefore qualify as a "copy"; (2) it was Cablevision's subscribers, rather than Cablevision, who were responsible for storing the copy of the works on the RS-DVR; and (3) the playback function did not involve any "public performance" of the works because the RS-DVR system, as designed, only makes transmissions to one subscriber using a copy made by that subscriber. Because each RS-DVR transmission is made using a unique copy of a work made by an individual subscriber that can only be decoded exclusively by that subscriber's cable box, only the subscriber is capable of receiving any given transmission, and thus, the transmission is not made to the "public".

Accordingly, under Cablevision, the capture, recording and retransmission of a broadcast signal is not a "public performance" as long as an individually recorded signal is only accessible by one subscriber. The Second Circuit Court's position appears to be in direct contrast to the UK position in TVCatchUp (albeit that the Cablevision case dealt with capturing the signal for subsequent on-demand viewing), where the court held that where the recipients had access to the same work at the same time, it was held to be irrelevant that each user accessed the content individually.

The Technology of Aereo

In 2012, Aereo began streaming broadcast television over the Internet, but instead of seeking a compulsory license, Aereo has sought to take advantage of the exception created by the Second Circuit Court in Cablevision. Aereo's system employs thousands of individual antennas and digital video recording technology to transmit broadcast programming over the Internet to its fee-paying subscribers. When a subscriber elects to view a program, an antenna is assigned exclusively to that user to capture the signal as the programme is broadcast over the air, convert it into a digital format, and then make it available to its subscriber as a live stream over the Internet or to be saved for viewing at a later time. If the subscriber chooses to watch it "live," a copy of it is stored in a user-specific directory, which allows the subscriber to pause and rewind the programme. If the subscriber elects to record the programme, three copies, each recorded at a different quality rate, are stored on Aereo's hard drive.

Shortly after Aereo's launch in New York, ABC brought a lawsuit against Aereo alleging that the service infringed its exclusive right to perform its content publicly by retransmitting its works without paying the statutory licensing fee. ABC sought a preliminary injunction to shut Aereo down. Aereo argued that: (1) there is nothing to prevent it from capturing free network broadcast signals over the air, and (2) by creating individual, unique recordings of those broadcasts for personal use, it is, as in the Cablevision case, transmitting private rather than public performances.

In July 2012, the Southern District of New York denied the preliminary injunction against Aereo, finding that ABC did not have a likelihood of success on the merits, given the Cablevision precedent. ABC appealed the decision. The Second Circuit Court of Appeals affirmed the District Court's analysis on the basis that the case was analogous to Cablevision in two key respects: (1) like Cablevision, Aereo's system created unique copies of every programme an Aereo subscriber wished to watch or record, and (2) like Cablevision, Aereo's transmission of the live or recorded program to a particular subscriber was generated from a unique copy (and no other subscriber could view the transmission created by that copy).

FilmOn X and a Split in the Courts

At the same time, on the West Coast, Alki David launched a site called "BarryDriller," but now rebranded as FilmOn X. FilmOn X factually employs the same retransmission architecture as Aereo. The Broadcast Networks issued proceedings against FilmOn X for copyright infringement and sought a preliminary injunction.

Not constrained by the decision in Cablevision, a District Court in the Central District of California rejected Cablevision's analysis as resting on a misinterpretation of the 1976 Copyright Act, and granted a preliminary injunction against FilmOn X. The court reasoned that "Cablevision erroneously focused on whether an individual copy of the copyrighted work was made for each individual user, and thus whether 'the transmission itself is public' as opposed to whether the copyrighted work was being transmitted to the public." The California Court's thinking on this appears to be aligned with the conclusion reached by the CJEU in TVCatchUp.

The Central District of California Court had the power to grant a nationwide injunction, but the court decided to limit its decision to regions within the jurisdiction of the Ninth Circuit as its decision conflicted with precedent in the Second Circuit, and the issue had not been settled in other Circuits.

The limited injunction allowed FilmOn X to expand into other regions, including Washington, D.C. However, the Broadcast Networks initiated another set of proceedings against FilmOn X in a District of Columbia ("DC") District Court. The DC District Court agreed with the Central District of California Court's reasoning, and on September 5, 2013, granted a preliminary injunction against FilmOn X in all regions of the United States except the Second Circuit.

The D.C. District Court held that by making the Broadcast Networks' performance available to any member of the public who accesses the FilmOn X service, FilmOn X "transmit[s]...a performance...of the work...to the public, by means of any device or process," and therefore performs the copyrighted work publicly as defined by the Transmit Clause. The D.C. District Court held that by making the Broadcast Networks' performance available to any member of the public who accesses the FilmOn X service, FilmOn X "transmit[s]...a performance...of the work...to the public, by means of any device or process," and therefore performs the copyrighted work publicly as defined by the Transmit Clause.

The table below summaries the litigation history described above:

Recent Developments and Outlook

While the Broadcast Networks were successful in their proceedings against FilmOn X, on October 10, 2013, a United States District Court in Massachusetts refused to grant a preliminary injunction against Aereo in Boston. The court's decision is significant because it was the first lawsuit against Aereo outside the Second Circuit, and the court elected to follow the Second Circuit's reasoning in Cablevision. Buoyed by its success in the First and Second Circuits, Aereo is expanding rapidly to other cities including Chicago, Los Angeles, Houston, and Denver, and has announced an Android app that will allow subscribers in those cities to view broadcast television on their mobile devices. In addition, some cable and satellite companies have responded by threatening to use the decision in Aereo to re-engineer their own delivery systems to retransmit broadcast signals without paying a licensing fee.

Immediately following the decision in Massachusetts, Disney, CBS, NBCUniversal, WNET, Fox, and Univision filed a Petition for Writ of Certiorari asking the Supreme Court to review the Second Circuit Court's decision. The likelihood of the Supreme Court granting the petition is uncertain as there is currently no split among Circuit Courts. However, the FilmOn X decision in the Central District of California was appealed to the Ninth Circuit Court of Appeals, where a decision is expected in the next few months. If the Ninth Circuit upholds the Central District Court's injunction against FilmOn X, the issue will likely head to the Supreme Court.

Footnotes

1. The analogous EU "communication to the public" right is found in Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 which provides that "member states shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them."

2. The Second Circuit consists of the Second Circuit Court of Appeals and the District Courts in Connecticut, New York and Vermont.

3. The Ninth Circuit consists of the Ninth Circuit Court of Appeals and District Courts in Alaska, Arizona, California, Hawaii, Idaho, Montana, Nevada, Oregon and Washington.

4. The First Circuit consists of the First Circuit Court of Appeals and the District Courts in Maine, Massachusetts, New Hampshire, and Rhode Island.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.