Raw Films, Ltd. v. John Does 1-11, No. 3:2012cv00368 - Document 4 (S.D. Cal. 2012)
Court Description: ORDER Granting Expedited Discovery (Re Doc. 3 ): Plaintiff may serve a subpoena, pursuant to Fed. R. Civ. P. 45, on Cox Communications that seeks information sufficient to identify the defendants. Signed by Magistrate Judge Nita L. Stormes on 3/2/2012. (mdc)
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Raw Films, Ltd. v. John Does 1-11 Doc. 4 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 RAW FILMS, LTD., CASE NO. 12cv368-WQH (NLS) Plaintiff, 12 ORDER GRANTING EXPEDITED DISCOVERY vs. 13 14 [Doc. No. 3.] JOHN DOES 1-11, Defendant. 15 16 INTRODUCTION 17 18 Before the Court is Plaintiff’s motion to conduct expedited discovery, pursuant to Federal Rule 19 of Civil Procedure 26(d)(1), by serving a third party subpoena on an internet service provider (ISP) 20 in order to obtain the names of the Doe defendants in this case. Having considered the matter, the 21 Court GRANTS the motion. 22 BACKGROUND 23 This is a copyright infringement case brought by Plaintiff pursuant to 17 U.S.C. §§ 101 et seq. 24 Compl. ¶ 1. Plaintiff is a British corporation that owns the copyright to a motion picture called 25 “Bareback Street Gang.” Compl. ¶¶ 6 & 11. Plaintiff alleges Defendants used the internet to install 26 “BitTorrent,” a common peer-to-peer (P2P) file sharing protocol, on their computers for the purpose 27 of uploading, downloading and distributing its copyrighted work without permission. Compl. ¶¶ 15- 28 25. Such activity requires the participation of a group of individuals who can upload and download -1- 12cv368-WQH (NLS) Dockets.Justia.com 1 pieces of the work and then transmit them to one another for collection of the whole. Compl. ¶¶ 28- 2 34. The group of participants is called a “swarm.” Id. 3 Plaintiff hired IPP Limited (IPP) a company that carried out a forensic investigation to find 4 the Internet Protocol (IP) addresses of the individuals within the swarm. Compl. ¶ 35. IPP was able 5 to locate 11 IP addresses traced to physical addresses in California. Compl. ¶ 4, Exh. A (list of 11 6 addresses in San Diego, Oceanside, and Chula Vista using Cox Communications as the ISP). 7 Plaintiff now seeks leave to serve a Rule 451 subpoena on the Doe defendants’ Internet Service 8 Provider (ISP) in order to obtain their true identities for the prosecution of this lawsuit. (Motion 9 (“Mot.”) at 2.) 10 LEGAL STANDARDS 11 A. 12 A party may not seek discovery prior to the Rule 26(f) conference, unless that party obtains 13 a stipulation or court order to conduct early or expedited discovery. Fed. R. Civ. P. 26(d)(1). For 14 “good cause” shown, however, a court may order early discovery. Good cause may be found “where 15 the need for the discovery, in consideration of the administration of justice, outweighs the prejudice 16 to the responding party.” Semitool, Inc. v. Tokyo Electron America, Inc., 208 F.R.D. 273, 276 (N.D. 17 Cal. 2002). General principles 18 Rule 45, in conjunction with Rule 26, govern the discovery from nonparties by subpoena. A 19 subpoena may command a nonparty to produce designated documents, electronically stored 20 information, or tangible things in its possession, custody or control. Fed.R.Civ.P 45(a)(1)(A)(iii). 21 B. 22 In Columbia Ins. Co. v. Seescandy.com, 185 F.R.D. 573 (N.D. Cal. 1999) the court stated a 23 motion for expedited discovery should be granted to identify anonymous Internet users if the 24 following were shown: 25 1. Specific application to internet addresses the plaintiff can “identify the missing party with sufficient specificity such that 26 the Court can determine that defendant is a real person or entity who could be 27 sued in federal court;” 28 1 All references to Rules are to the Federal Rules of Civil Procedure. -2- 12cv368-WQH (NLS) 1 2. 2 3 4 the plaintiff has identified “all previous steps taken to locate the elusive defendant;”and 3. the “plaintiff’s suit against defendant could withstand a motion to dismiss.” Id. at 578-580. 5 Subsequently, the courts in UMG Recordings, Inc. v Doe, 2008 WL 4104214, *4 (N.D.Cal.), 6 Arista Records LLC v. Does 1-43, 2007 WL 4538697, *1 (S.D.Cal.), and Capitol Records, Inc. v. Doe, 7 2007 WL 2429830, *1 (S.D. Cal.) looked at whether a plaintiff’s complaint alleged a prima facie case 8 for infringement, whether there was any other way to identify the Doe defendant, and whether there 9 was a risk the ISP would destroy its logs prior to the conference. 10 The Court will apply all these considerations to this case. 11 DISCUSSION 12 A. Identification of Defendants 13 Plaintiff has provided IP addresses for the Doe defendants and the name of the ISP, Cox 14 Communications, in Exhibit A attached to its Complaint. [Doc. No. 1-1.] Plaintiff’s forensic expert, 15 Tobias Fieser, states that “[a]n IP address is a unique numerical identifier that is automatically 16 assigned to an internet user by the user’s [ISP].” (Mot., Exh. 1(" Fieser decl.”) ¶ 7.) The ISP then 17 keeps track of which IP addresses belong to which of their subscribers. Id. In this way, the requested 18 discovery will provide the true names and addresses of the individuals performing the alleged 19 infringing acts. The Court finds Plaintiff has sufficiently identified each Doe defendant such that the 20 Court can determine the defendants are real persons or entities who may be sued in federal court. 21 B. Previous steps taken to locate defendants 22 Plaintiff hired a professional company providing forensic investigation services to copyright 23 owners to secure the IP addresses and ISP . (Fieser decl. ¶ 5.) Because the transactions in question 24 occurred entirely online, the defendants have been elusive and the IP addresses and ISP are the only 25 available identifying information. Without the requested discovery, there are no other measures 26 Plaintiff can take to identify the personal information for the Doe defendants. The Court finds 27 Plaintiff has taken all the steps it can on its own to identify the defendants. 28 -3- 12cv368-WQH (NLS) 1 C. Withstanding a motion to dismiss 2 BitTorrent, like the P2P network in A & M Records Inc. v. Napster, Inc., 239 F.3d 1004 (9th 3 Cir. 2001) is an online media distribution system that copies and distributes copyrighted works. 4 When this is done without permission it is indisputably copyright infringement. Napster, 239 F.3d 5 at 1014. Plaintiff has sufficiently pleaded exclusive ownership of a valid copyright and that the Doe 6 defendants participated in the swarm that, without permission, copied and distributed Plaintiff’s work. 7 See Ellison v. Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004) (defining elements of infringement). 8 Plaintiff’s allegation that each defendant was willingly and knowingly a part of the “swarm” for 9 purposes of the infringing conduct supports Plaintiff’s claim of contributory infringement. See 17 10 U.S.C. § 504(c)(1) & (2). Plaintiff has thus made a prima facie showing of copyright infringement 11 and has alleged sufficient facts to withstand a motion to dismiss. 12 D. 13 Plaintiff has alleged “ISPs only retain the information sufficient to correlate an IP address to 14 a person at a given time for a very limited amount of time.” (Fieser Decl. ¶ 11.) There is a risk, 15 therefore, that the discovery will be deleted prior to the Rule 26(f) conference. Good cause 16 Moreover, the discovery is narrowly tailored to obtain only the information required to name 17 the Doe defendants. Without such information the case cannot move forward and Plaintiff will not 18 be able to protect its copyrighted work. Thus, the risk of prejudice to the responding party is 19 outweighed by the need for expedited discovery. Accordingly, the Court finds good cause to grant 20 Plaintiff’s motion for leave to serve the third party subpoena. 21 E. Consideration of joinder, jurisdiction and fairness to Doe defendants 22 In actions such as this one, where the Defendants have not yet appeared, it is the duty of the 23 court to consider not only the prejudice to the ISP, but also the prejudice to the as yet unnamed Doe 24 Defendants and the interests of the Court in the just determination of every action. See Capitol 25 Records, Inc. v. Does 1-16 2007 WL 1893603 at * 1 (D. N.M. May 24, 2007) (denying expedited 26 discovery and recognizing "the harm related to disclosure of confidential information."). 27 1. Joinder 28 One issue presented is whether the 11 Doe defendants have properly been joined in this -4- 12cv368-WQH (NLS) 1 single suit. See, e.g. IO Group, Inc. v. Does 1-435, 2011 WL 445043 (N.D. Cal. Feb. 3, 2011)(noting 2 that use of the same ISP and peer to peer network is insufficient to establish proper joinder)(citing 3 cases.) The issue of joinder is one of concern to the court, especially where, as here, there is no named 4 party to raise the issue. As one court has noted, copyright "plaintiffs have devised a clever scheme 5 to obtain court-authorized discovery prior to the service of complaints, but it troubles me that they do 6 so with impunity and at the expense of the requirements of Rule 11(b)(3) because they have no good 7 faith evidentiary basis to believe the cases should be joined." IO Group, Inc. v. Does 1-435 at *6, 8 2011 WL 445043 (N.D.Cal. Feb. 3, 2011), quoting Arista Records, LLC v. Does 1-27, at *19 n. 5 9 2008 WL 222283 (D.Me. Jan. 25, 2008). Also of concern to the court is that: "a consequence of 10 postponing a decision on joinder in lawsuits similar to this action results in lost revenue of perhaps 11 millions of dollars [from lost filing fees] and only encourages Plaintiffs . . . to join (or misjoin) as 12 many doe defendants as possible.” Arista Records, LLC v. Does 1-11, 2008 WL 4823160, at * 6 (N.D. 13 Ohio Nov. 3, 2008) 14 In this evolving area of law, some courts have found good cause to address the question of 15 joinder early in the litigation. As one court observed: “Postponing the issue of joinder to a day that 16 in all likelihood will never come only serves to aid Plaintiffs' attempt to avoid filing fees. While 17 Plaintiffs are certainly entitled to vindicate their rights, they must play by the Federal Rules in doing 18 so.” Arista Records, LLC v. Does 1-11, 2008 WL 4823160 (N.D. Ohio Nov. 3, 2008), quoting Sony 19 BMG Music Entm't v. Does 1-5, No. CV 07-2434 SJO (JCx) (C.D.Cal. Aug. 29, 2007): see also IO 20 Group v. Does 1-435, 2011 WL 1219290 (N.D. Cal. Jan. 10, 2011)(severing doe defendants and 21 modifying order allowing early discovery); Arista Records, LLC. v. Does 1-27, 2008 WL 222283 (D. 22 Me. January 25, 2008)(suggesting that plaintiffs may have violated Rule 11 by alleging that joinder 23 is proper in order to avoid paying filing fees); Arista Records, LLC. v. Does 1-11, 2008 WL 4823160 24 (N.D. Ohio Nov. 3, 2008)(finding that deferring the issue would only "aid Plaintiffs' attempt to avoid 25 filing fees."); but see, e.g., Call of the Wild Movie, LLC, v. Does 1-1,062 — F.Supp.2d — 2011 WL 26 996786 (D. D.C. March 22, 2011)(collecting cases finding issue of joinder premature at early stages.) 27 After careful consideration of the issue, the Court agrees that the issue of joinder should be 28 addressed as early as possible. In this case, the complaint sufficiently alleges that defendants are -5- 12cv368-WQH (NLS) 1 properly joined due to the use of BitTorrent, which necessarily requires each user to be an uploader 2 as well as a downloader. The Court notes, however, that there is a question as to whether the joinder 3 will be proven appropriate once the necessary facts are established. 4 2. 5 Another issue presented is whether this court has personal jurisdiction over the Doe 6 defendants. Plaintiff admits that they do not know the identity of the Doe Defendants. Nonetheless, 7 Plaintiff asserts that Jurisdiction and Venue are proper in this court because the IP addresses have been 8 traced to physical addresses within the district, that each defendant resides in the State of California 9 and that the defendants engaged in systematic business activity a substantial part of which occurred 10 Jurisdiction and Venue in this State. 11 The Court concludes the issue of jurisdiction cannot be resolved without allowing the 12 discovery sought. Even though the discovery is allowed, the Court notes the issue of personal 13 jurisdiction remains. See IO Group v. Laperna 2009 WL 36608 (N. D. Cal. January 6, 2009)(No 14 specific jurisdiction over Defendant who improperly displayed copyrighted images on website.) but 15 see IO Group, Inc. v. Pivotal, Inc., 2004 WL 838164, at *5-6 (N.D.Cal. Apr. 19, 2004)(Jurisdiction 16 proper over nonresident alleged to be illegal downloader). 17 3. 18 The Court should afford some protection to Doe defendants with potentially valid 19 objections to the jurisdiction and venue of this court. Therefore, Plaintiff may not release any 20 information identifying a Doe defendant without further Order issued by this Court. Each Doe 21 defendant shall have the opportunity to challenge the jurisdiction of this Court and the subpoena 22 issued prior to being publicly accused of being an illegal downloader.2 Additionally, Plaintiff shall 23 provide the ISP with a copy of this Order and the Complaint in this action to be sent to each 24 subscriber. The ISP shall serve each subscriber located within the jurisdiction of this court via regular Protections for the Doe defendants 25 26 27 28 2 Attached as Appendix A to this Order is a Court-Directed Notice Regarding Issuance of Subpoena. The Court-Directed Notice explains the issues and circumstances surrounding the subpoena and contains a resource list to assist the subscriber in finding a lawyer and/or information about the how to challenge the subpoena. -6- 12cv368-WQH (NLS) 1 United States mail and shall serve each subscriber located outside the jurisdiction of this Court via 2 Federal Express or other overnight mail service. Plaintiff shall reimburse the ISP for all mailing fees. 3 Moreover, if any Doe defendant seeks to challenge either the jurisdiction of this court or the 4 subpoenas issued, they may do so anonymously and shall have the right to remain anonymous until 5 such time as the Court Orders that the identifying information can be released. 6 CONCLUSION 7 For Good Cause shown, Plaintiff’s motion for expedited discovery is GRANTED. IT IS 8 FURTHER ORDERED that: 9 1. Plaintiff may serve a subpoena, pursuant to Fed. R. Civ. P. 45, on Cox 10 Communications that seeks information sufficient to identify the defendants, including their names, 11 current addresses, telephone numbers, e-mail addresses, and Media Access Control addresses for each 12 Doe defendant; 13 2. Plaintiff may only use the information disclosed for the sole purpose of 14 protecting its rights in pursuing this litigation and may not release any identifying information without 15 a court order allowing the release of the information; 16 3. Within seven calendar days after service of the subpoenas, Cox 17 Communications shall notify the subscribers that their identities are sought by Plaintiff and shall serve 18 a copy of this order and the Complaint in this action on each subscriber. Cox shall serve the 19 subscribers located in Imperial and San Diego Counties via regular United States Mail and shall notify 20 all other subscribers via Federal Express or other overnight mail service. Each subscriber whose 21 identity is sought may, within twenty-one calendar days from the date of such notice, file documents 22 with the Court that contest the subpoena; 23 4. If Cox wishes to move to quash the subpoena, it shall do so before the return 24 date of the subpoena. If such a motion is brought, Cox shall preserve the information sought by 25 Plaintiff in the subpoena pending resolution of such motion. 26 5. Plaintiff shall provide Cox with sufficient copies of this Order and the 27 Complaint in this action to be served on each subscriber when the subpoenas are served on each of 28 them. -7- 12cv368-WQH (NLS) 1 2 6. Plaintiff shall reimburse Cox for all mailing fees. DATED: March 2, 2012 3 4 5 6 Hon. Nita L. Stormes U.S. Magistrate Judge United States District Court 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -8- 12cv368-WQH (NLS) 1 2 APPENDIX A 3 COURT-DIRECTED NOTICE REGARDING ISSUANCE OF SUBPOENA 4 5 6 7 A subpoena has been issued directing your Internet Service Provider (“ISP”), to disclose your name. The subpoena has been issued because you have been sued in the United States District Court for the Southern District of California, in San Diego, California as a “John Doe” by Raw Films, Ltd. You have been sued for infringing copyrights on the Internet by uploading and/or downloading a motion picture. The owner of the copyright to the movie, has identified you only as a “John Doe” and has served a subpoena on your ISP to learn your identity. This notice is intended to inform you of some of your rights and options. 8 9 YOUR NAME HAS NOT YET BEEN DISCLOSED. YOUR NAME WILL BE DISCLOSED IN 21 DAYS IF YOU DO NOT CHALLENGE THE SUBPOENA. 10 11 12 13 14 15 Your name has not yet been disclosed. The Plaintiff has given the Court enough information about your alleged infringement to obtain a subpoena to identify you, but the Court has not yet decided whether you are liable for infringement. You can challenge the subpoena in Court. You have 21 days from the date that you receive this notice to file a motion to quash or vacate the subpoena. If you file a motion to quash the subpoena, your identity will not be disclosed until the motion is resolved (and the Plaintiff cannot proceed against you until you are identified). The Resource List in this notice can assist you in locating an attorney, and lists other resources to help you determine how to respond to the subpoena. If you do not file a motion to quash, at the end of the 21 day period, your ISP will send the plaintiff your identification information. The Plaintiff may contact you, but may not release your name without a Court Order. 16 OTHER ISSUES REGARDING THE LAWSUIT AGAINST YOU 17 18 19 20 To maintain a lawsuit against you in the Southern District of California, the Plaintiff must establish jurisdiction over you in California. If you do not live or work in California, or visit the state regularly, you may be able to challenge the California court's jurisdiction over you. If your challenge is successful, the case in California will be dismissed, but the Plaintiff may be able to file against you in another state where there is jurisdiction. Additionally, you can challenge "joinder," the fact that Plaintiff has sued 11 defendants together and Plaintiff must establish that the alleged violations arose out of the same transaction, occurrence, or series of transactions and occurrences. 21 22 You may also wish to find your own lawyer (see resource list below) to help you evaluate whether it is in your interest to try to reach a settlement or to defend against the lawsuit. 23 RESOURCE LIST 24 25 The organizations listed below provide guidance on how to find an attorney and court process. If you live in or near California or San Diego, the second and third listings below provide referrals for local attorneys. 26 27 American Bar Association http:// www. abanet/org/ legal services/ findlegal help/ home. htm 28 California Bar Association http:// www. calbar.org -9- 12cv368-WQH (NLS) 1 San Diego County Bar Association http:// www. sdcba.org 2 3 4 Electronic Frontier Foundation 454 Shotwell Street San Francisco, California 94110-1914 email: Information@eff. org https://www.eff.org/issues/file-sharing/subpoena-defense 5 6 7 The Southern District of California www.casd.uscourts.gov The website contains important information, such as the Local Rules, Contact Information and answers to Frequently Asked Questions 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 10 - 12cv368-WQH (NLS)
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