On September 5, 2013, Judge Rosemary Collyer of the United States District Court for the District of Columbia issued an order blocking FilmOn from offering its antenna/DVR service. FilmOn (previously known as “BarryDriller.com” and “Aereokiller”) is essentially a knock-off of Aereo, the Barry Diller-backed antenna/DVR service that was found to be non-infringing by the Second Circuit earlier this year. In a 32-page opinion, Judge Collyer held that while FilmOn’s service was factually indistinguishable from Aereo, she was not bound by the Second Circuit’s opinion. Referring to the December 2012 Central District of California decision enjoining FilmOn from providing its service in the Ninth Circuit, Judge Collyer concluded that the plaintiffs (owners or licensees of broadcast network and local station programming) were likely to succeed on the merits of their copyright infringement action against FilmOn. Notably, Judge Collyer issued an order making her decision applicable not only in the District of Columbia, but also in all other parts of the country except the Second Circuit (New York, Connecticut and Vermont).
Background. In July 2012, a federal judge in the Southern District of New York denied a request for an injunction filed by various copyright owners against Aereo, relying in large part on the Second Circuit’s 2008 decision upholding the lawfulness of Cablevision’s remote storage DVR service. In both the Aereo case and the Cablevision case, the courts concluded that the retransmission of a unique copy of copyrighted television programming was a “private” performance, not a “public” performance, and thus non-infringing under the Copyright Act. The decision of the Southern District in the Aereo case was affirmed by the Second Circuit in April 2013.
Shortly after the Southern District of New York ruled in favor of Aereo, a separate entity, FilmOn, launched an essentially identical service in several markets. Many of the same plaintiffs who had sued Aereo brought suit against FilmOn, first in the Central District of California and later in the District of Columbia. In December 2012, the California court granted the plaintiffs’ requested injunction, expressly rejecting the legal analysis of the Second Circuit in both the Aereo and Cablevision cases. According to the California court, the transmissions of copyrighted television programming to subscribers of FilmOn’s antenna/DVR service constituted infringing public performances of that programming. However, in recognition of the different conclusion reached by the Second Circuit, the California court limited its injunction to the Ninth Circuit (an area comprised of California and eight other western states).
In May 2013, the plaintiffs brought a new infringement action against FilmOn in the United States District Court for the District of Columbia. Plaintiffs argued that the court should follow the reasoning of the California district court rather than the reasoning of the Second Circuit. Plaintiffs also requested that any injunction issued by the District of Columbia court be given nationwide effect.
Decision. Judge Collyer acknowledged at the outset of her opinion that she effectively was faced with a “binary” choice: follow the reasoning of the Second Circuit in the Cablevision and Aereo cases and rule in favor of FilmOn or follow the reasoning of the Central District of California decision and grant the requested injunction. Judge Collyer emphasized that she was not bound by any of these prior decisions and that her decision was based on an independent review of the facts and law. Based on her independent review, Judge Collyer concluded that FilmOn’s transmissions constituted “public performances” under the terms of the Copyright Act’s “Transmit Clause.” The “Transmit Clause,” as summarized by Judge Collyer, states that a public performance occurs when a performance of a copyrighted work is communicated to members of the public by means of any device or process. In reaching this conclusion, Judge Collyer stressed her belief that the Congress intended the Transmit Clause to be read broadly.
Judge Collyer questioned FilmOn’s contention that it does not perform the transmitted works publicly because its service is based on “a one-to-one relationship” between a single mini-antenna and the viewer. She noted that while each user may be temporarily assigned an antenna and hard-drive directory, the mini-antennas are networked together so that a single tuner server and router, video encoder, and distribution endpoint can communicate with them all. This system, she stated, “is hardly akin to an individual user stringing up a television antenna on the roof.” Indeed, she indicated that could see no meaningful difference between FilmOn’s retransmissions and those made by a traditional cable system (which clearly are deemed public performances under the Copyright Act). In further support of her decision, Judge Collyer pointed to language in the Copyright Act’s legislative history indicating that Congress intended the phrase “by means of any device or process” to encompass not only existing technologies, but also “any other techniques and systems not yet in use or even invented.”
Having found that the plaintiffs were likely to prevail on the merits of their infringement claim, Judge Collyer made quick work of the other prongs of the standard four-part test for injunctive relief. First, she found that the plaintiffs had provided sufficient, non-speculative evidence that they are likely to suffer irreparable harm if FilmOn is not enjoined from offering its service. Such harm includes damage to plaintiffs’ ability to negotiate with advertisers; damage to their contractual relationships and ability to negotiate with authorized resellers (i.e., retransmission consent); interference with their proprietary and licensed online distribution avenues (such as Hulu); and the loss of control over the distribution and quality of their programming. Second, Judge Collyer concluded that the balance of harms tips in plaintiffs’ favor because FilmOn has no cognizable interest in continuing to infringe plaintiffs’ copyrights and because FilmOn, which admitted to having licensing agreements for a number of traditional cable channels, would be free to continue these legal retransmissions. Finally, Judge Collyer agreed with past precedent holding that the public interest is served by upholding copyright protections.
With the decision to grant an injunction resolved, Judge Collyer turned to the question of the injunction’s geographic scope. As noted above, the Central District of California, in enjoining FilmOn’s service last December, had limited its injunction to activities conducted in the Ninth Circuit. However, Judge Collyer pointed out that Section 502(a) and (b) of the Copyright Act provide that any injunction granted to prevent or restrain infringement of copyright “shall be operative throughout the United States and shall be enforceable by proceedings in contempt or otherwise, by any United States court having jurisdiction of [the person so enjoined].” Based on this provision, Judge Collyer granted plaintiffs’ request for nationwide relief, carving out an exception for the Second Circuit in recognition of that court’s conflicting decision in the Aereo case.
Analysis. Judge Collyer’s decision clearly is a setback, not only for FilmOn, but also for Aereo (even though it was not a party to the suit). However, FilmOn almost certainly will appeal Judge Collyer’s decision to the District of Columbia Circuit. In addition, the Ninth Circuit recently heard oral argument in FilmOn’s appeal of the California district court case whose analysis Judge Collyer found to be persuasive. And Aereo will have another opportunity to make the case for antenna/DVR service in a hearing later this month in an infringement action brought against it in Boston. The outcome of these various proceedings cannot be predicted, but the fact that two district courts have ruled against FilmOn increases the likelihood that there eventually could be a “split in the circuits” that only the Supreme Court or Congress could resolve. As for the impact of these cases on the Cablevision remote storage DVR, Judge Collyer’s decision leaves open the door for a court to distinguish that technology, which is employed with respect to licensed content, from Aereo-like antenna/DVR services.