In a long-awaited ruling, the Second Circuit held on
Monday that unauthorized reproductions of data, such as
digital movie files, in computer buffers are not infringing
copies because they are not fixed "for a period of more than
transitory duration." Cartoon Network LP v. CSC Holdings,
Inc. and Cablevision Systems Corp., Nos. 07-1480-cv(L) &
07-1511-cv(CON) (2nd Cir. Aug. 4, 2008) (reversing Twentieth
Century Fox v. Cablevision, 478 F. Supp. 2d 607 (S.D.N.Y.
A substantial line of cases has held replications in the
random access memory (RAM) of computers to constitute
fixed "copies." Cartoon Network is the first case to consider
whether the same conclusion applies to buffer copies, a
ruling that could have swept a wide range of technologies
into the realm of prima facie copyright infringement. The
Second Circuit opinion also addressed important issues
concerning responsibility for direct infringement and the
public performance right, in each instance upholding
Cablevision's "Remote Storage" Digital Video Recording
System (RS-DVR) against infringement claims.
Cartoon Network's Key Holdings
Before a data reproduction can be deemed an infringing
copy, it must satisfy a "duration requirement" as well as
the requirement it be embodied in a tangible medium
of expression; where fragments of a work of authorship
contained in a stream of data are copied into a buffer for
no more than 1.2 seconds before being automatically
overwritten, such reproductions are not copies and their
unauthorized creation is not copyright infringement.
Even though unauthorized, fixed copies of complete
video works are created on Cablevision's hard drives,
Cablevision is not liable as a direct infringer because it is
Cablevision's customers, not Cablevision, who make the
copies by supplying the "volitional conduct" required for
Cablevision does not infringe the public performance
right through the operation of its system. When
each playback transmission of previously recorded
programming is made to a single subscriber, using
a single unique copy produced by that subscriber on
Cablevision's hard drives, such transmissions are not
performances to the public and therefore
do not infringe.
Factual Background: The "Remote Storage" DVR System
Cablevision is an operator of cable television systems. It
designed the RS-DVR System to allow customers who do
not have a stand-alone DVR to record cable programming on
central hard drives housed and maintained by Cablevision at
a "remote" location. Customers can then receive playback of
those programs through their home television sets.
Cablevision does not record all of its programming for
possible later retransmission. Rather, when a customer
asks, either in advance of a broadcast or when one is
under way, to record that broadcast, the system stores
that programming onto a portion of one of the hard disks
allocated to that customer.
As part of that process, a data stream consisting of all
available programming is first routed through two buffers.
The entire stream moves to the first buffer (the "primary
ingest buffer"), at which point the server automatically
checks whether any customers want to record anything.
If a customer has requested a particular program, the
data for that program moves from the primary buffer into
a secondary buffer, and then onto the hard drive, where
separate copies are made for each requesting customer.
New data flow into the primary buffer, overwriting the data
already on the buffer. The primary ingest buffer holds no
more than 0.1 seconds of each channel's programming at
any moment. Thus, every tenth of a second, the content
residing on this buffer is automatically erased and replaced.
The second buffer holds no more than 1.2 seconds of
programming at any time before it is erased
Plaintiffs' Claims and District Court Proceedings
Cablevision announced its system before deploying it, and
a number of copyright holders sued for declaratory and
injunctive relief. Plaintiffs alleged that reproducing their
entire works in the buffers created infringing copies, that
Cablevision was directly liable for the complete copies
made on its hard drives, and that Cablevision violated the
copyright holders' exclusive right to publicly perform their
works when Cablevision retransmitted their works to more
than one customer. Plaintiffs alleged theories only of direct
infringement, not secondary liability; and Cablevision
waived any defense based on fair use. On cross-motions for
summary judgment, the district court ruled for plaintiffs.
The "Buffer Copying" Claim
Under the Copyright Act, a copyright holder has the exclusive
right to reproduce the work "in copies." 17 U.S.C. § 106(1).
The Act defines a copy as a material object in which the
work is fixed, and fixation in turn requires embodiment in a
tangible medium of expression "sufficiently permanent or
stable to permit it to be.... reproduced.... for a period of more
than transitory duration." § 101.
Buffers are forms of RAM that hold data for a brief
amount of time, usually shortly before use, to improve
performance. A well-established line of cases has held
that a digital copy of a work that is maintained in RAM is
fixed, notwithstanding that RAM contents disappear when
the computer is turned off. See, e.g., MAI Systems Corp. v.
Peak Computer Inc., 991 F.2d 511 (9th Cir. 1993). No
case had hitherto expressly considered whether works
passing through a buffer can be deemed fixed copies.
As a law professor's amicus brief argued, since buffers
are employed in all currently available digital devices –
computers, cell phones, personal digital assistants, MP3
and compact disk players, fax machines, digital televisions,
etc. – if buffers were held to create "copies" within the
meaning of copyright law, then each "use of a digital device
of any kind (turning on a digital TV, or browsing a website on
the Internet)" would "become an act fraught with potential
The Second Circuit began its analysis by unpacking the
fixation requirement. The Court held that the statutory
definition of fixation "plainly imposes two distinct but
related requirements: the work must be embodied in a
medium.... (the 'embodiment requirement'), and it must
remain thus embodied 'for a period of more than transitory duration' (the 'duration requirement')." The district court
erred, the Court of Appeal held, by considering only the
embodiment and not the duration requirement.
Similarly, the Court argued that MAI Systems addressed
only the embodiment requirement, on the theory that the
duration requirement was not analyzed and was not at issue
in the case. "[W]e construe MAI Systems and its progeny as
holding that loading a program into a computer's RAM can
result in copying that program. We do not read MAI Systems
as holding that, as a matter of law, loading a program into
a form of RAM always results in copying. Such a holding
would read the 'transitory duration' language out of the
The Court readily concluded the duration requirement was
not satisfied by Cablevision's use of buffers:
"No bit of data remains in any buffer for more than a
fleeting 1.2 seconds. And unlike the data in cases like MAI
Systems, which remained embodied in the computer's RAM
memory until the user turned the computer off, each bit of
data here is rapidly and automatically overwritten as soon
as it is processed.... [T]hese facts strongly suggest that
the works in this case are embodied in the buffer for only a
'transitory' period, thus failing the duration requirement."
The Hard Drive Copying Claim
Although copyright is a strict liability regime, there is a
line of cases beginning with Religious Technology Center v.
Netcom On-Line Communication Services, 907 F. Supp. 1361
(N.D. Cal. 1995), holding that absent some volitional act
by the owner of the system a party cannot be held directly
liable for copyright infringement based on its passive
ownership of an electronic facility which, responding
automatically to users' input, creates infringing copies. In
a case of first impression for the Second Circuit, the Court
adopted the Netcom volition standard.
The Court compared the RS-DVR with a traditional VCR and
found, for the purpose of the volition analysis, that the two
technologies are not sufficiently distinguishable: whether
the consumer is pushing the record button on an RS-DVR
or a VCR, that person is directing an otherwise automatic
copying process. Turning to the district court's reliance on
Cablevision's selection of the programming it would make
available for recording using the RS-DVR, the Second Circuit
found that Cablevision's selection was not sufficiently
proximate to the copying to constitute volition.
The Court considered finally Cablevision's ongoing
relationship with its customers and its control over the
recordable content offered. These factors would potentially
bear on secondary liability, but did not negate the limitation
on Cablevision's direct responsibility as the passive owner
of instrumentalities used for copying.
The Public Performance Claim
The Copyright Act grants copyright owners the exclusive
right, "in the case of... motion pictures and other
audiovisual works, to perform the copyrighted work
publicly." 17 U.S.C. §106(4). Under the relevant portion
of the Act, to perform a work "publicly" means to transmit
a performance of the work "to the public, by means of
any device or process, whether the members of the public
capable of receiving the performance... receive it in the
same place or in separate places..., at the same time or at
different times." 17 U.S.C. §101 (emphasis added).
Relying on what it considered the plain meaning
of the definition in §101 and several cases interpreting the
phrase "to the public," the Court held that the transmission
of recorded programming using the RS-DVR was not an
infringement of the public performance right because such
transmission was not "to the public." According to the Court,
the "transmit clause" of the definition treats the transmission
itself as the performance. Therefore, members of the public
must be capable of receiving a particular transmission at
different times or in different places in order to constitute a
public performance. It is not enough, according to the Court,
that the original content is capable of being received by
Cablevision subscribers at different times, in different places.
Because each copy of such content in the RS-DVR is capable
of transmission to only one subscriber, there is no public
performance. Any other result, the Court maintained, would
"obviate any possibility of a purely private transmission," a
non-infringing transmission clearly contemplated by the
drafters of §101.
The Court's holding on public performance may appear to
some content delivery network providers as a loophole,
prompting such providers to make separate copies of each
work and associate each copy with one subscriber, or allow
subscribers to do so, in order to avoid liability. Anticipating
this criticism, the Court pointed out that such providers
would still be subject to other forms of copyright liability,
including infringement of the reproduction right or liability
for contributory infringement.
The Cartoon Network case raises several issues of first
impression and shows some tension with related decisions
from other circuits. While courts considering future cases will
no doubt find the decision instructive, all may not follow the
Second Circuit's analysis. These evolving issues therefore
remain far from settled.
For further information, please contact:
Mitchell Zimmerman, Chair, Copyright Group
Chad Woodford, Senior Associate,
Intellectual Property Group
©2008 Fenwick & West LLP. All Rights Reserved.
This update is intended by Fenwick & West LLP to
summarize recent developments in the law. It is not
intended, and should not be regarded, as legal advice.
Readers who have particular questions about these
issues should seek advice of counsel.