Malibu Media LLC v. Doe
ORDER signed by Judge Rudolph T Randa on 12/12/2013: Denying as Moot 19 Motion to Seal Exhibit C to the Complaint, Granting 22 Motion to file response to the Court's Order to show cause under seal, and Granting 26 Motion for Leave to File a brief amicus curiae in support of sanctions, in case 2:13-cv-00536-RTR; Denying as Moot (14) Motion to Seal Exhibit C to the Complaint, Granting (18) Motion to file response to the Court's Order to show cause under seal, and gra nting (20) Motion for Leave to File a brief amicus curiae in support of sanctions, in case 2:13-cv-00544-RTR; and Denying as Moot (9) Motion to Seal Exhibit C to the Complaint, Granting (12) Motion to file response to the Court's Order to show cause under seal, and Granting (14) Motion for Leave to File a brief amicus curiae in support of sanctions, in case 2:13-cv-00779-RTR. (cc: all counsel) (nts) Text Modified on 12/13/2013 (nts).
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
MALIBU MEDIA, LLC,
Case No. 13-C-536
JOHN DOE, subscriber assigned
IP address 18.104.22.168,
MALIBU MEDIA, LLC,
Case No. 13-C-544
JOHN DOE, subscriber assigned
IP address 22.214.171.124
MALIBU MEDIA, LLC,
Case No. 13-C-779
JOHN DOE, subscriber assigned
IP address 126.96.36.199
DECISION AND ORDER
In these and many other cases filed in federal courts all over the country,
Malibu Media is suing individuals for illegally downloading their copyrighted adult
films. The pattern that emerged, both here and elsewhere, is that Malibu Media would
sue an anonymous defendant associated with an Internet Protocol address and then
attach an exhibit to its complaint listing a large number of downloaded titles that do
not correspond to the copyrights-in-suit. See Complaints, Exhibit C. Some of these
titles are crude, obscene, and pornographic, much more so than the works copyrighted
by Malibu Media, a purveyor of “sophisticated erotica.”1 Thus, an initially anonymous
defendant, who may or may not be guilty of infringing Malibu Media’s copyrights,
would likely feel pressured to enter a quick settlement to avoid having his or her name
associated with a particularly embarrassing list of pornographic films. Following the
lead of Judge Crocker and Judge Conley in the Western District of Wisconsin, the
Court issued an order directing Malibu Media to show cause as to why it should not be
sanctioned for attaching this exhibit to its complaints. Malibu Media, LLC v. Doe,
2013 WL 5276081 (E.D. Wis. Sept. 17, 2013); see also Malibu Media LLC v. Doe,
2013 WL 4821911 (W.D. Wis. Sept. 10, 2013) (Judge Conley’s Order imposing
sanctions). Just like in the Western District cases, the Electronic Frontier Foundation
(“EFF”), a non-profit digital rights group, filed an amicus brief in support of sanctions.
Malibu Media has responded to the Court’s order to show cause and also to the
Compare, “A Girls Fantasy” with “Cute innocent Japanese girl . . . helpless body” (Case
No. 13-C-536); “Red Satin” with “18XGirls . . . Takes On Two . . .” (Case No. 13-C-544); and “First
Love” with “....Amber.VS.Nikki.Sexx. . . . Challenge.ImmoralLive” (Case No. 13-C-779).
arguments presented by EFF.
The Court is considering sanctions under Federal Rule of Civil Procedure
11(b)(1), which provides that by “presenting to the court a pleading . . . an attorney . . .
certifies to the best of the person’s knowledge, information, and belief, formed after an
inquiry reasonable under the circumstances” that the pleading “is not being presented
for any improper purpose, such as to harass, cause unnecessary delay, or needlessly
increase the cost of litigation.” Some courts have noted that Rule 11 has an objective
component and a subjective component. Szabo Food Service, Inc. v. Canteen Corp.,
823 F.2d 1073, 1083 (7th Cir. 1987). Under this line of reasoning, the objective
inquiry asks whether the pleading was filed after reasonable investigation into the law
and the facts, and the subjective inquiry asks whether the pleading was filed for an
improper purpose. In re Collins, 250 B.R. 645, 661 (Bankr. N.D. Ill. 2000) (citing
Szabo, Harlyn Sales Corp. Profit Sharing Plan v. Kemper Fin. Servs., Inc., 9 F.3d
1263 (7th Cir. 1993), and Mars Steel Corp. v. Cont’l Bank N.A., 880 F.2d 928 (7th Cir.
1988), among other cases). At the same time, there are “a few Seventh Circuit cases
that place an ‘objective’ label on the test to determine whether a paper was interposed
for an improper purpose.” Id. (citing Pacific Dunlop Holdings, Inc. v. Barosh, 22
F.3d 113, 118 (7th Cir. 1994); Deere & Co. v. Deutsche Lufthansa Aktiengesellschaft,
855 F.2d 385, 393 (7th Cir. 1988)).
It strikes the Court as counterintuitive to use an objective standard under Rule
11(b)(1), since “the test of whether a paper was interposed for an improper purpose
focuses on the reasons or motives for the filing.” In re Collins at 662. However, what
the case law seems to suggest is that the circumstances surrounding an objectionable
filing can be used to evaluate whether the filing was motivated by an improper
purpose. See, e.g., Nat’l Ass’n of Gov’t Emp., Inc. v. Nat’l Fed’n of Fed. Emp., 844
F.2d 216, 224 (5th Cir. 1988) (“A court must focus on objectively ascertainable
circumstances that support an inference that a filing harassed the defendant or caused
unnecessary delay”); Sussman v. Bank of Israel, 56 F.3d 450, 458 (2d Cir. 1995) (the
court “is not to delve into the attorney’s subjective intent” in filing the paper, but rather
should assess objective factors such as “whether the papers or proceedings caused
delay that was unnecessary, whether they caused increase in the cost of litigation that
was needless, or whether they lacked any apparent legitimate purpose”). In other
words, a court must “focus on the objectively ascertainable circumstances and not on
the subjective intent of the filing party.” Bullard v. Chrysler Corp., 925 F. Supp. 1180,
1190 (E.D. Tex. 1996) (citing Sheets v. Yamaha Motors Corp., 891 F.2d 533, 538 (5th
Cir. 1990)); see also Vandeventer v. Wabash Nat’l Corp., 893 F. Supp. 827, 840 (N.D.
Ind. 1995) (“where there is no direct evidence of subjective intent the courts have
applied the objective test and have inferred improper purpose when a certified
document (1) is meritless, and (2) results in delay, harassment, a needless increase in
costs, or some other illegitimate result”). This is perhaps a more roundabout way of
framing the issue like Judge Conley framed it: “even if this court is unable to conclude
definitively that the attorney subjectively thought that he or she was engaging in
harassment, sanctions may be warranted where an objectively reasonable attorney
should know that: (1) there is no real need to take a given litigation action; and (2) the
action would substantially harass or embarrass the opposing party.”
4821911, at *4 (citing Harlyn, 9 F.3d at 1270) (emphases in original); see also Sheets,
891 F.2d at 538 (if a “reasonably clear legal justification can be shown for the filing of
the paper in question, no improper purpose can be found and sanctions are
As before Judge Conley, Malibu Media vigorously defends its decision to
attach Exhibit C to its complaints, explicitly disclaiming any sort of ill motive or
intent. In a lengthy memorandum, Malibu Media explains that it hired a company
called IPP International to expand the universe of .torrent files that are scanned as part
of Malibu Media’s pre-suit investigation. The result is Exhibit C, which is used as a
cross-reference tool to help paint a picture of the alleged infringer. By comparing
publicly-available information about the subscriber with the information in the crossreference tool, Malibu Media asserts that is able to confirm or deny that the subscriber
is the actual infringer. For example, if Malibu Media learns that the subscriber is a fan
of the Chicago White Sox who enjoys fly fishing, and the cross-reference tool shows
that four White Sox games and a how-to manual for fly fishing were downloaded using
the subscriber’s IP address, Malibu Media can use this information to prove that the
subscriber was the individual who infringed its copyrights.
As an initial matter, the actual relevance of this information is highly
questionable. An IP address identifies, at most, an internet subscription that can be
used by multiple people.
Accordingly, it does not necessarily follow that the
individual associated with certain unique characteristics – i.e., the White Sox fan/fly
fishing enthusiast – is the individual who downloaded Malibu Media’s films.
Moreover, Malibu Media is a purveyor of “sophisticated erotica which is appealing to
men, women, and couples,”2 so hardcore pornography downloads are minimally
probative of the actual infringer’s identity. Fed. R. Evid. 404(b)(1), (2) (“other acts”
evidence “is not admissible to prove a person’s character in order to show that on a
particular occasion the person acted in accordance with the character,” but such
evidence “may be admissible for another purpose, such as proving . . . identity . . .”).
Even if Exhibit C is somehow relevant or useful in this game of “whodunit,”
there is no legitimate justification for Malibu Media to attach the exhibit to its
complaints in the first instance. In the mine run of cases, Malibu Media tracks the
infringing activity to a specific IP address. Malibu Media then files a complaint along
with a motion to serve a third-party subpoena on the anonymous defendant’s Internet
Service Provider. At this point, Malibu Media has stated a plausible claim for relief.
A plaintiff doesn’t need to anticipate or overcome substantive defenses in its
pleadings. At the pleading stage at least, the exhibit is completely unnecessary. Judge
Conley’s Order, 2013 WL 4821911, at *3 (“Malibu Media concedes that in all of the
cases it has filed it ‘has never had a case dismissed pursuant to Fed. R. Civ. P.
Response to the Order to Show Case, Ex. E, Declaration of Colette Field, ¶ 4.
12(b)(6)’ with or without the attachment of an exhibit of this kind”). Malibu Media’s
assertion that it was simply trying to bolster the strength of its case does not pass
scrutiny since it could have achieved the same result by filing Exhibit C under seal,
redacting the most scandalous titles therefrom, or “pleading that it has a much more
comprehensive list of materials and, if a defendant refuses to acquiesce or assist,
providing the actual list to him or her directly and confidentially.” Id. at *2.
With regard to “assistance,” Malibu Media argues that in its experience, the
infringer is almost always the subscriber, but if the Doe defendant is innocent, then he
or she will usually know the actual infringer. To this end, the complaint attaches a
form labeled “Exculpatory Evidence Request”3 which can be used in conjunction with
Exhibit C to help identify the infringing party. This is simply an additional form of
The subscriber might attempt to shift blame to someone else, but the
subscriber would still feel substantial pressure to accept the blame, especially if the
actual infringer is a family member or other close relation. Either way, the choice
between outing yourself or one of your relatives as an alleged connoisseur of extreme
pornography isn’t a very appealing scenario. Moreover, if the subscriber argues that a
neighbor or other third-party gained access through a hacked or unsecured WI-FI
connection, the subscriber still must consider the possibility that Malibu Media will
This form includes the following entries: “1. List all authorized users (including household
members) of any IP Address assigned to the Defendant; . . . 5. What is the distance from the
Defendant’s residence to the closest neighbor? _____ Yards; . . . 9. Has the Defendant and/or
Authorized Users as listed in #1 above ever visited a streaming media site containing unauthorized
copies of Plaintiff’s works?” Case No. 13-C-536, ECF No. 1-4.
forge ahead with its complaint in any event.
Finally, the entirety of Malibu Media’s litigation conduct strongly suggests that
Exhibit C was filed for an improper purpose. According to a PACER search, Malibu
Media has filed over a thousand cases thus far in 2013.4 The Court doubts that Malibu
Media has the resources to fully litigate even a fraction of this amount of cases.
Malibu Media has the legal right to enforce its copyrights, but the sheer number of
lawsuits corroborates the Court’s belief that Exhibit C was being filed to coerce quick
and early settlements. Malibu Media explains that at the beginning of 2013, it stopped
suing people in joined suits and began to sue defendants on an individual basis.
Malibu Media portrays this as a voluntary decision to focus on “persistent on-line
infringers,” but in reality, Malibu Media was forced to pursue individual defendants
because courts began rejecting its attempts to prosecute “same-swarm joined”5 cases
against multiple defendants. See, e.g., Malibu Media, LLC v. John Does 1-23, 878 F.
Supp. 2d 628 (E.D. Va. 2012); Malibu Media, LLC v. Doe, 923 F. Supp. 2d 1339
(M.D. Fla. 2013).
As one court observed, by “requiring Malibu to file separate
lawsuits for each of the Doe Defendants, Malibu will have to expend additional
resources to obtain a nuisance-value settlement – making this type of litigation less
On December 12, 2013, a search for “All Court Types Party Search Name malibu media
filed on or after 01/01/2013 All Courts” showed 1,115 records found.
“BitTorrent works by breaking files into many smaller files ‘to reduce the load on the
source computer, rather than downloading a file from a single source computer (one computer
directly connected to another), [and] allows users to join a ‘swarm’ of host computers to download
and upload from each other simultaneously (one computer connected to numerous computers).” In re
BitTorrent Adult Film Copyright Infringement Cases, --- F.R.D. ---, 2012 WL 1570765, at *2
(E.D.N.Y. July 24, 2012).
profitable. If Malibu desires to vindicate its copyright rights, it must do it the oldfashioned way and earn it.” Malibu Media, LLC v. John Does 1 through 10, 2012 WL
5382304, at *4 (C.D. Cal. June 27, 2012); see also In re BitTorrent Adult Film
Copyright Infringement Cases, 2012 WL 1570765 at *13 (“In the four cases before
this Court, plaintiffs have improperly avoided more than $25,000 in filing fees by
employing its swarm joinder theory”). Thus, the widespread use of Exhibit C can be
viewed as a concerted attempt to recoup some of the efficiency that was lost when
courts started rejecting Malibu Media’s attempts to pursue multi-defendant lawsuits.
Whatever the reason, these types of cases are already infected with the potential for
abuse, and Malibu Media doubled-down by threatening to publicly associate infringers
with extreme pornographic works having no relevance to its own copyrights. Malibu
Media and its counsel should not be allowed to abuse the legal system in this manner
without being called to account for it.
As a last resort, Malibu Media argues that neither it nor its counsel should be
sanctioned because it has taken corrective action by moving to seal Exhibit C in
previously-filed cases, and also because it has instructed counsel nationwide to never
file Exhibit C with a complaint again. Given that there is no “safe harbor” provision
when a Court acts on its own initiative under Rule 11(c)(3), “corrective action . . .
should be taken into account in deciding what – if any – sanction to impose if, after
consideration of the litigant’s response, the court concludes that a violation has
occurred.” Fed. R. Civ. P. 11 Advisory Committee Notes (1993). However, the Court
also considers whether “the improper conduct . . . was part of a pattern of activity” or
whether “the person has engaged in similar conduct in other litigation.” Obviously,
the use of Exhibit C is (or was) part of an overall pattern of abusive litigation practices.
Malibu Media is a sophisticated litigant, so it should not be allowed to avoid sanctions
simply by adapting its tactics after being questioned by multiple federal judges.
Moreover, the ultimate goal of Rule 11 sanctions is deterrence. Fed. R. Civ. P.
11(c)(4). The sanction imposed by Judge Conley achieved a measure of deterrence;
further sanctions are warranted as a way of supplementing and reinforcing the initial
deterrent effect. Accordingly, the sanction here will be the same as before Judge
Conley: $200 per case, for a total of $600.
NOW, THEREFORE, BASED ON THE FOREGOING, IT IS HEREBY
EFF’s motions for leave to file a brief amicus curiae in support of
sanctions [ECF No. 26 in Case No. 13-C-536, ECF No. 20 in Case No. 13-C-544, and
ECF No. 14 in Case No. 13-C-779] are GRANTED;
Malibu Media’s motions to seal Exhibit C to the complaints [ECF No.
19 in Case No. 13-C-536, ECF No. 14 in Case No. 13-C-544, and ECF No. 9 in Case
No. 13-C-779] are DENIED as moot;
Malibu Media’s motions for leave to file its response to the Court’s
Order to show cause under seal [ECF No. 22 in Case No. 13-C-536, ECF No. 18 in
Case No. 13-C-544, and ECF No. 12 in Case No. 13-C-779] are GRANTED; and
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Counsel for Malibu Media is sanctioned $200 in each of the above-
captioned cases for a total of $600, to be paid to the Clerk of Court.
Dated at Milwaukee, Wisconsin, this 12th day of December, 2013.
BY THE COURT:
HON. RUDOLPH T. RANDA
U.S. District Judge
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