UPDATE-WRITETHRU: How long will it take before Wall Street’s cheers for TiVo CEO Tom Rogers turn into catcalls? The Street applauded the former lawyer and NBC cable big shot today following TiVo’s agreement to settle a seven-year patent dispute with Dish Network. TiVo shares were up 3%, to $9.86, after the satellite company’s cunning billionaire CEO Charlie Ergen agreed to pay TiVo $500 million. Dish made the payment so it could continue to provide its customers with DVRs that do things TiVo says it invented — including record one show while users watch another. Rogers says that means TiVo can pretty much insist that every DVR provider fork over a license fee. TiVo has already charged Microsoft, Motorola, Verizon, and AT&T with patent infringement. “The precedent is set” in TiVo’s favor, Rogers says as he vows to “aggressively enforce our intellectual property” rights. But TiVo is a DVR provider, not a law firm. And its core business is growing weaker each year. It had about 2 million subscribers in January — down from its peak of 4.4 million in January 2007. It has also consistently lost money for the last two years. Rogers continued to charge hundreds of dollars for DVRs capable of integrating Web video with conventional TV shows at a time when most consumers were satisfied paying about $10 a month for the simple, if often badly designed, DVRs that their cable or satellite providers offer. Meanwhile, Rogers’ pals in the cable industry let him down. Beginning in 2005 he cut deals with Comcast, Cox and others: They agreed to give TiVo about a buck a month for each subscriber willing to pay an additional fee to have TiVo’s user interface on their DVRs. But that strategy has been long on press releases and short on results as cable companies complained about how difficult it is to integrate TiVo software into their set-top boxes. As a result, all TiVo has are its lawsuits. It recently borrowed $150 million, mostly to ensure that it would have enough cash to keep the court battles going.
Although Ergen blinked first in his standoff with TiVo, he may have outsmarted Rogers by dragging the case out as long as he did. Bernstein Research analyst Craig Moffett says that Dish’s $500 million payment was “far less than we expected.” Dish, which has 14.2 million subscribers, no longer has to worry about a court order that would force it to turn off all of its DVRs. “That would have been a knock-out blow,” Ergen told analysts. And Dish now can count on TiVo’s help as the satellite company figures out what to do with Blockbuster, the bankrupt home video chain that Ergen just bought. TiVo is one of the few Web devices that offers its subscribers the movies that Blockbuster transmits through its video-on-demand service. “I hope we win the war, and that TiVo wins the war,” Ergen says. But investors seem more optimistic about Ergen’s prospects than they do about Rogers’. Dish shares were up nearly 19%, to $29.79 on Monday.
PREVIOUS, MONDAY AM: Dish Network CEO Charlie Ergen blinked first: The satellite company said Monday morning that it has agreed to pay TiVo $500 million to settle their long-running dispute over who controls key patents to the DVR. The agreement appears to strengthen TiVo’s hand in lawsuits against Microsoft, Motorola, Verizon and AT&T over whether DVRs that they’ve built also violate TiVo patents. TiVo says it controls the technology that enables DVRs to do things like record one show while the user watches another. But if Dish had lost its case in court, then it would have been at TiVo’s mercy: The DVR company could have demanded that Dish either pay a huge license fee, or turn off service to its customers’ DVRs.
TiVo and Dish now say that they plan to work together at Blockbuster, the bankrupt home video retailer that Dish just bought for $320 million. Although Ergen’s light on details, he says that the TiVo will “help develop our Blockbuster service.” Ergen is thought to be interested in using Blockbuster’s brand name to develop a service that would challenge Netflix in streaming movies and TV shows vis the Internet.
TiVo CEO Tom Rogers says that the agreement “demonstrates the significant return affording to our shareholders by diligent enforcement of TiVo’s property rights. Those efforts will aggressively continue with other parties.”
There’ll be more to come: TiVo will discuss the settlement in a conference call at 9 AM ET. Dish has a scheduled call to discuss 1Q earnings at noon.
Dish says in an SEC filing that the deal with TiVo was cut on April 29. The $500 million total includes $298 million that will be paid as a a “subscriber-related expense” through July 2018 when TiVo’s key patent expires. The settlement follows an April 20 ruling at the U.S. Court of Appeals in Washington that sided with TiVo on most of the important legal questions — but also gave Dish the opportunity to file appeals that would have dragged out the dispute.
Dish’s Ergen has good reason to want to put the TiVo case behind him, aside from his plans with Blockbuster. Dish has been losing customers. The company had 14.2 million subscribers at the end of March down 1% from the same time last year.
But time also was not on Rogers’ side. The company has steadily lost money and subscribers as it struggled to compete with the relatively inexpensive DVRs that cable and satellite companies provide their customers. Rogers hoped to turn things around by making friends with cable companies. Beginning in 2005 he cut deals with Comcast, Cox and others: They’d pay TiVo about a buck a month for each subscriber willing to pay an additional fee to have TiVo’s user interface on their DVRs. But that strategy has been long on press releases, and short on results as cable companies complained about how difficult it is to integrate TiVo software into their set top boxes. That left Rogers hoping for a big win in court against Dish, and the possibility of collecting license fees from just about anyone who sells DVR services. TiVo recently borrowed $150 million, mostly to ensure that it would have enough cash to keep the court battles going.