Edited by Gregory J. Battersby
and Charles W. Grimes Litigator
VOLUME 20 NUMBER 2
MARCH/APRIL 2014 I P L i t i g a t o r 1
and Copyright: The Supreme
Court’s Review of ABC v. Aereo
Julie Albert and Paul Ragusa
Paul Ragusa is a partner and Julie Albert is an
associate at Baker Botts, LLP in New York,
NY, where they practice intellectual property law
including litigation, licensing, and counseling.
US law provides copyright owners with a bundle of
rights to protect their original works, including the exclusive
right to publicly perform the copyrighted work. The
question of what constitutes a public performance has
become increasingly complicated in our digital world.
Is the transmission of a copyrighted work via miniature
antenna technology a performance broadcast to
the public ? What factors guide this determination? The
Supreme Court’s upcoming decision in American Broadcasting
Companies, Inc. v. Aereo, Inc. could put to rest
a decades-long dispute over the meaning of a “public
performance,” creating a new landscape for over-the-air
content providers, broadcasters, and viewers.
The Public Performance
Right: Creation to Cablevision
A copyright holder’s exclusive right “to perform the
copyrighted work publicly” 1 has become one of the most
valuable of the bundle of rights associated with copyright
ownership and its scope has expanded dramatically over
time. When the public performance right was first added
to the US copyright law in 1856, its application was fairly
straightforward: Copyright holders were granted the
exclusive right to perform dramatic works to the public
for profit. 2 Over the next 120, the “dramatic works”
limitation was expanded and the profit requirement was
dropped, broadening the public performance right.
The expansion of the public performance right was
driven, at least in part, by rapid technological change.
Public performances are no longer limited to opera
houses and concert halls, but have grown from radio
broadcasts, to television, to downloading and streaming
original works online. Copyright law has evolved with
technological advances in mind. As early as the mid-
1960s, officials in the Copyright Office urged legislators
to be mindful of technology, stating that “[a] real danger
to be guarded against is that of confining the scope of an
author’s rights on the basis of the present technology so
that, as the years go by, his copyright loses much of its
value because of unforeseen technical advances.” 3
A public performance presently is defined using two
mutually exclusive clauses: (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.” 4 The second clause, known as the Transmit
Clause, brings transmission of a performance of a work
under the auspices of the public performance right. 5 The
phrase “any device or process” encompasses broadcast
technology. However, the meaning of the term “… or to
the public” is not nearly as clear. Although the Transmit
Clause indicates that a transmission is itself a performance,
the question presented in ABC v. Aereo remains:
When is a transmission a public performance?
The issue has been explored in several cases, with inconsistent
results. In On Command Video Corp. v. Columbia
Pictures Industries , 6 the Northern District of California
considered the public performance implications of a
hotel video-on-demand system. This wired system connected
guestroom televisions with a central console, and
allowed guests to select from a number of available movies
to view at their convenience, using their remote control.
Although hotel rooms are considered to be private
places, 7 the court held that such a system infringed the
public performance right under the Transmit Clause. The
On Command court found the actual viewing location’s
privacy to be irrelevant due to the public commercial
relationship between the transmitter and the audience,
citing congressional intent to protect public performance
rights whether viewed or received “… in the same place
2 I P L i t i g a t o r MARCH/APRIL 2014
or in separate places and at the same time or at different
Over a decade later, the Second Circuit came to the
opposite conclusion in Cartoon Network LP, LLLP v.
CSC Holdings, Inc. ( Cablevision ). 9 Cablevision’s customers
could subscribe to a remote storage digital video
recorder (RS-DVR) service, permitting users to store cable
programs in individual files, to be viewed at times chosen
by each individual user. The Second Circuit found that
because Cablevision’s RS-DVR system only transmits “to
one subscriber using a copy made by that subscriber,” 10
such a transmission is not “to the public,” and thus not
a public performance. In Cablevision , the Second Circuit
found the relevant transmission to be the single transmission
of a single, dedicated copy to a single subscriber—if
no two individuals can view the same transmission, there
is no infringement of the public performance right. The
Second Circuit based this finding on the fact that, because
the potential audience for any audiovisual work is the
general public, any transmission of such work would
constitute a public performance and obviate the Transmit
Clause’s “to the public” limitation. 11 The Cablevision
opinion emphasized that its holding “does not generally
permit content delivery networks to avoid all copyright
liability by making copies of each item of content and
associating one unique copy with each subscriber to the
network, or by giving their subscribers the capacity to
make their own individual copies.” 12 Rather than relying
exclusively on the public performance right, the Second
Circuit rearticulated the importance of a strong reproduction
right, suggesting that “the right of reproduction can
reinforce and protect the right of public performance.” 13
More recently, in Warner Bros. Entertainment Inc. v.
WTV Systems, Inc. , 14 the defendants, Zediva, operated
a DVD “rental” service. Instead of a traditional
rental, Zediva purchased individual DVDs, played those
DVDs on individual DVD players for up to four hours,
and streamed content directly to individual users upon
request. The court rejected Zediva’s contention that it
was simply operating a DVD rental service, safely within
the ambit of the first-sale doctrine, holding instead that
its transmission of copyrighted works “to the public over
the Internet” violated the plaintiffs’ public performance
right. 15 This appears consistent with the Cablevision
individual-copy requirement, because Zediva users did
not create individual copies, but instead streamed protected
content from an existing DVD.
Free Broadcast TV Comes
at a Cost
Key to understanding the policy issues in ABC v. Aereo
is the historic distinction between cable and broadcast
(or over-the-air) television, and how new technology fits
within this framework. Originally, local network television
stations in the United States broadcast signals over
the air, using frequencies granted to them by the federal
government. In exchange for these frequencies, network
broadcasters, including ABC, NBC, PBS, and FOX, are
subject to FCC requirements, including availability of
educational programming, accessibility to viewers with
disabilities, and dissemination of local public safety
information. 16 Free airwaves permitted all people with
a television and an antenna to capture the signals and
watch television in their own homes. Because these networks
broadcast programming for free, and cannot offer
subscription packages, they rely heavily on advertising—
showing commercials—to generate revenue. In contrast,
cable television networks are subscription-based, offering
television programming to viewers who pay for the
service. For this reason, among others, cable companies
often operate with comparatively less volatile revenue
In order to ensure the continued availability of free
broadcast television to consumers, the FCC has required
cable systems to dedicate a portion of their channels to
local, over-the-air broadcasting stations since the 1970s,
via regulations often referred to as “must-carry” rules.
These regulations were enacted into law via the Cable
Television Consumer Protection and Competition Act
of 1992. 17 Must-carry rules require cable companies
to carry local television stations’ signals if desired, or,
alternatively, permit broadcast stations to opt out of
mandatory carriage over cable and invoke retransmission
consent, where cable operators can pay a fee to carry
New technology has created more ways and places to
watch television than ever. We can watch network programming
streamed on any Internet-connected device,
on our televisions through a cable box, or via Internetbased
services. But, regardless how they get to our
screens, at their core, network television programs still
exist within the broadcast/cable distinction; unlike cable,
over-the-air network programming is broadcast pursuant
to must-carry rules or retransmission consent agreements
with cable providers.
ABC v. Aereo and Its
Aereo is a paid, subscription-based service that allows
users to view television programming over the Internet.
Although the Internet-based Aereo operates primarily
on computer screens, it can be connected to a television
through a digital media player. In action, Aereo allows
you to watch live broadcast television, as it appears when
MARCH/APRIL 2014 I P L i t i g a t o r 3
viewed using a regular cable box (although at a delay).
As with a DVR, Aereo has the capability to record and
store programming for viewing at a later time.
Aereo differs from cable television and other streaming
services because of its method of collecting and transmitting
broadcast signals. Aereo utilizes an “antenna
farm,” a collection of thousands of dime-sized antennas,
each of which is capable of capturing and transmitting
one signal to one subscriber. Users can select either
“Watch” mode, in which the program is not saved at
the conclusion of viewing, or “Record mode, which creates
a digital recording exclusively associated with the
user who requested it. 18 Aereo’s antennas collect—for
free—the same signals as the cable providers, who, as
discussed above, must carry or pay broadcast stations for
retransmission rights. The growth of Aereo and similar
entities “has led certain cable and satellite companies to
question why they should continue to obtain permission
to retransmit broadcast programming” 19 when Aereo
Aereo was launched in the New York City area in
early 2012, and a lawsuit was filed in the Southern District
of New York in July of that year. 20 Aereo relied
heavily on Cablevision , citing the functional similarities
between its antenna system and the DVR system used
by Cablevision. The District Court denied the networks’
request for a preliminary injunction, holding that the
copies of programming created by Aereo’s system were
not “materially distinguishable” from those created by
Cablevision’s RS-DVR technology. The Second Circuit
affirmed this decision in WNET, Thirteen v. Aereo, Inc. 21
in April 2013.
During the ongoing Aereo litigation in New York,
another suit was filed in Massachusetts to enjoin Aereo’s
spread to Boston, 22 and a similar entity was sued in both
California 23 and the District of Columbia. 24 Aereo was
permitted to stream in Boston, but FilmOn X, another
micro-antenna programming provider, was preliminarily
enjoined from operating outside of the Second Circuit—
the bounds of Cablevision . Both the Ninth Circuit and
the DC Circuit have docketed appeals, pending the
outcome of ABC v. Aereo in the Supreme Court. In
February 2014, a judge in the District of Utah issued a
preliminary injunction against Aereo, but also granted
Aereo’s motion to stay the proceedings pending the
Supreme Court’s decision. 25
In an interesting twist, both parties petitioned for
certiorari in ABC v. Aereo . The networks urged the
Supreme Court to consider “whether a company
‘publicly performs’ a copyrighted television program
when it retransmits a broadcast of that program to
thousands of paid subscribers.” 26 Aereo, taking issue
with the petitioners’ question presented, nonetheless
joined in the request for certiorari seeking universal
affirmance and application of the Second Circuit’s
holding. Certiorari was granted on January 10, 2014,
and the two sides are expected to present oral arguments
on April 22.
The ABC v. Aereo decision may have an immediate
impact on how we watch and pay for copyrighted television
programming. Cable companies, media organizations,
musicians, and professional sports leagues have
submitted amicus briefs in support of the networks,
underscoring the importance and breadth of the issue.
The Court’s decision likely will affect how broadcast
networks operate going forward, and of course, whether
cable-alternative companies such as Aereo will be permitted
1. 17 U.S.C. § 106(4).
2. Act of August 18, 1856, 34th Cong., 1st Sess., 11 Stat. 138.
3. Copyright Law Revision: Hearings on H.R. 4347 before the Subcommittee
on Courts, Civil Liberties and the Administration of Justice of the House
Committee on the Judiciary, 89th Cong., 1st Sess. 32-33 (1965) (testimony of
George Cary, Deputy Register of Copyrights).
4. 17 U.S.C. § 101.
5. See 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 8.14[B]
, at 8-190 (rev. ed. 2013).
6. On Command Video Corp. v. Columbia Pictures Indus., 777 F. Supp. 787
(N.D. Cal. 1991).
7. See Columbia Pictures Indus. v. Professional Real Est. Investors, Inc., 866
F.2d 278, 281 (9th Cir. 1989) (“While the hotel may indeed be ‘open to the
public,’ a guest’s hotel room, once rented, is not.”).
8. Id. at 790 ( quoting H.R. Rep. No. 83, 90th Cong., 1st Sess. 29 (1967)).
9. Cartoon Network LP, LLLP v. CSC Holding, Inc. (Cablevision), 536 F.3d
121 (2d Cir. 2008).
10. Id. at 137.
11. See id . at 139.
13. Id. at 138.
14. Warner Bros. Enter. Inc., v. WTV Sys., Inc., 824 F. Supp. 2d 1003 (C.D. Cal.
15. Id. at 1009.
16. Although broadcast networks officially switched to all-digital transmission
in 2009, allowing for more programming to be broadcast simultaneously, the
broadcast/cable distinction remains.
17. Pub. L. No. 1102-385, § 2, 106 Stat. 1460 (1992), codified at 47 U.S.C. § 536(a)(3), (5).
The Supreme Court balanced the statute’s potential First Amendment impact
against its consumer protection aims and found the Cable Act to be a contentneutral,
narrowly tailored antitrust measure designed to protect broadcasters from
anticompetitive behavior. See Turner Broadcasting Sys. v. FCC, 520 U.S. 180 (1997).
18. Brief for Respondent at 3-5, Am. Broadcasting Companies, Inc. v. Aereo,
Inc., No 13-471 (U.S. Dec. 12, 2013).
19. Petition for Writ of Certiorari at 34, American Broadcasting Companies,
Inc. v. Aereo, Inc., No. 13-461 (U.S. Oct. 11, 2013).
20. Am. Broadcasting Companies, Inc. v. Aereo, Inc., 874 F. Supp. 2d 373
21. WNET, Thirteen v. Aereo, Inc., 712 F.3d 676 (2d Cir. 2013).
22. Hearst Stations, Inc. v. Aereo, Inc., Civ. A. No. 13-11649, slip op. (D. Mass.
Oct. 8, 2013).
23. Fox Television Stations, Inc. v. BarryDriller Content Sys. PLC, 915 F. Supp.
2d 1138 (C.D. Cal. 2012).
24. Fox Television Stations, Inc. v. FilmOn X LLC, No. CV 13-758, 2013 WL
4763414 (D.D.C. Sept. 5, 2013).
25. Cmty. Television of Utah LLC et al. v. Aereo Inc., No. 2:13-cv-00910 (D.
Utah Feb. 19, 2014).
26. Petition for Writ of Certiorari at i, ABC v. Aereo (No. 13-461).
Copyright © 2014 CCH Incorporated. All Rights Reserved.
Reprinted from IP Litigator, March/April 2014, Volume 20, Number 2, pages 19–21,
with permission from Aspen Publishers, Wolters Kluwer Law & Business, New York, NY,