SBO Pictures, Inc v. Does 1-3036

Filing 14

ORDER by Judge Samuel Conti granting in part and denying in part 4 Ex Parte Application for Leave to Take Limited Discovery; granting 2 Motion for Extension of Time to File (sclc2, COURT STAFF) (Filed on 11/30/2011)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SBO PICTURES, INC., d/b/a WICKED
PICTURES, a California
Corporation,

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Plaintiff,

For the Northern District of California

United States District Court

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v.
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DOES 1-3036,
Defendants.

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Case No. 11-4220 SC
ORDER GRANTING IN PART
PLAINTIFF'S EX PARTE
APPLICATION FOR LEAVE TO
TAKE EXPEDITED DISCOVERY,
SEVERING DOE DEFENDANTS 23036 FROM ACTION, AND
DISMISSING CLAIMS AGAINST
DOE DEFENDANTS 2-3036

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I.

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INTRODUCTION
On August 26, 2011, Plaintiff SBO Pictures, Inc., d/b/a Wicked

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Pictures ("Plaintiff") filed a Complaint against 3036 unnamed

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defendants ("Doe Defendants"), alleging copyright infringement.

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ECF No. 1 ("Compl.").

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Application for Leave to Take Limited Discovery, seeking leave to

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take third-party discovery in order to unearth the identities of

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Doe Defendants.

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forth below, the Court GRANTS IN PART Plaintiff's Application,

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SEVERS Doe Defendants 2-3036 from this action, and ORDERS that the

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claims against Doe Defendants 2-3036 be dismissed due to improper

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joinder.

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The same day, Plaintiff filed an Ex Parte

ECF No. 4 ("Application").

For the reasons set

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II.

BACKGROUND
Plaintiff is a motion picture production company.

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Compl. ¶ 7.

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Plaintiff alleges that it owns the copyright to the film "XXX

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Avengers" ("the Motion Picture").

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Motion Picture is the subject of the valid Certificate of

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Registration No. PA 1-745-351, issued June 10, 2011 by the United

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States Copyright Office, and that Plaintiff owns the registration.

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Id. ¶ 8.

Id.

Plaintiff claims that the

Plaintiff alleges that Doe Defendants used "an online media

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United States District Court

For the Northern District of California

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distribution system, in this case a BitTorrent network, a 'peer to

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peer' network (or a 'P2P' network), to reproduce [and distribute]

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at least one copy of the Motion Picture."

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Plaintiff, "[e]ach Defendant has acted in cooperation with the

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other Defendants by agreeing to provide, and actually providing, on

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a P2P network an infringing reproduction of at least substantial

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portions of Plaintiff's copyrighted Motion Picture, in anticipation

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of the other Defendants doing likewise with respect to that work

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and/or other works."

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Defendants acted in concert by participating in the same BitTorrent

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"swarm,"1 to achieve unlawful reproduction and distribution of the

Id. ¶ 11.

Id. ¶ 10.

According to

Plaintiff alleges that all Doe

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Jon Nicolini ("Nicolini"), Vice President of Plaintiff's
contractor, Copyright Enforcement Group, submitted a declaration in
support of Plaintiff's Request. ECF No. 5 ("Nicolini Decl."). He
explains how P2P networks distribute infringing copies of
copyrighted works through file sharing software such as BitTorrent.
The process begins when one user accesses the Internet through an
Internet service provider and intentionally makes a digital file of
a work available to the public from his or her computer. Nicolini
Decl. ¶ 6. This file is referred to as the first "seed." Id.
Other users, who are referred to as "peers," then access the
Internet and request the file. Id. These users engage each other
in a group, referred to as a "swarm," and begin downloading the
seed file. Id. As each peer receives portions of the seed, that
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Motion Picture.

Id.

Plaintiff alleges that Doe Defendants'

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actions have violated Plaintiff's rights under the Copyright Act,

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17 U.S.C. §§ 101, et seq.

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Plaintiff attaches to the Complaint a list allegedly

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containing the Internet Protocol ("IP") addresses of each Doe

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Defendant, the date and time of each alleged infringement, and the

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Internet Service Provider ("ISP") associated with each IP address.

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Compl. Ex. A ("IP Log").

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Enforcement Group ("CEG"), declares that through monitoring

Plaintiff's contractor, Copyright

United States District Court

For the Northern District of California

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Internet-based infringement of Plaintiff's copyrighted content, it

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confirmed that each Doe Defendant reproduced at least a substantial

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portion of the Motion Picture.

Nicolini Decl. ¶¶ 17-19, 22.

Plaintiff argues that due to the anonymous nature of the peer-

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to-peer file distribution system used by Doe Defendants, it can

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only identify the names and addresses of individuals associated

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with these IP addresses by subpoenaing the ISPs.

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of ISPs to compel them to provide the name, address, telephone

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number, and e-mail address of each Doe Defendant.

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Application Ex. 1 ("Sample Subpoena").

Application at 6,

Plaintiff seeks leave to serve third-party subpoenas on dozens

See IP Log;

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III. LEGAL STANDARD
Generally, a party may not initiate discovery before the

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parties have met and conferred pursuant to Federal Rule of Civil

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Procedure 26(f).

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"for the convenience of parties and witnesses and in the interests

However, a court may authorize earlier discovery

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peer makes those portions available to other peers in the swarm.
Id.
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of justice."

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demonstrate good cause for earlier discovery.

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v. Tokyo Electron Am., Inc., 208 F.R.D. 273, 276 (N.D. Cal. 2002).

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"Good cause may be found where the need for expedited discovery, in

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consideration of the administration of justice, outweighs the

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prejudice to the responding party."

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United States District Court

For the Northern District of California

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Fed. R. Civ. P. 26(d).

The requesting party must
See Semitool, Inc.

Id.

According to the Ninth Circuit:
[W]here the identity of alleged defendants will
not be known prior to the filing of a
complaint[,] . . . the plaintiff should be
given an opportunity through discovery to
identify the unknown defendants, unless it is
clear that discovery would not uncover the
identities, or that the complaint would be
dismissed on other grounds.

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Gillespie v. Civiletti, 629 F.2d 637, 642 (9th Cir. 1980).

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leave to conduct discovery to identify a Doe defendant, the moving

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party must: (1) identify the defendant with enough specificity to

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allow the Court to determine whether the defendant is a real person

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or entity who could be sued in federal court; (2) recount the steps

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taken to locate the defendant; (3) show that its action could

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survive a motion to dismiss; and (4) file a request for discovery

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with the Court identifying the persons or entities on whom

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discovery process might be served and for which there is a

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reasonable likelihood that the discovery process will lead to

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identifying information.

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F.R.D. 573, 578-80 (N.D. Cal. 1999) ("Columbia Ins.").

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For

Columbia Ins. Co. v. seescandy.com, 185

In the context of parties seeking discovery in alleged online

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piracy, the court must balance "the need to provide injured parties

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with [a] forum in which they may seek redress for grievances"

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against "the legitimate and valuable right [of Internet users] to

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participate in online forums anonymously or pseudonymously . . .

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without fear that someone who wishes to harass or embarrass them

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can file a frivolous lawsuit and thereby gain the power of the

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court's order to discover their identity."

Id. at 578.

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IV.

DISCUSSION
The Court is satisfied that Plaintiff has met the first,

finds that Plaintiff has not established that it could satisfy the

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United States District Court

second, and fourth Columbia Insurance factors.

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For the Northern District of California

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third Columbia Insurance factor because it has not shown that the

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Complaint could survive a motion to dismiss based on improper

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joinder.

However, the Court

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A.

Permissive Joinder Under Rule 20

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Federal Rule of Civil Procedure 20(a) provides that parties

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may be joined in a single lawsuit where the claims against them

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arise from a single transaction or a series of closely related

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transactions.

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joinder, a court may sever the misjoined parties, "so long as no

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substantial right will be prejudiced by the severance."

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v. Rogers, 130 F.3d 1348, 1350 (9th Cir. 1997) (citation omitted);

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see Fed. R. Civ. P. 21 ("Misjoinder of parties is not a ground for

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dismissing an action.").

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If defendants do not satisfy the test for permissive

Coughlin

In this case, the Court finds that Plaintiff has failed to

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satisfy the Rule 20 requirements for permissive joinder.

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argues that the Doe Defendants are properly joined because they

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infringed the same copyrighted work in cooperation with each other

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by exchanging portions of the work with one another (i.e., they

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were a part of the same "swarm"), and the nature of the BitTorrent

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Plaintiff

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technology requires concerted action with regard to each swarm.

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Application at 12-14.
Courts in this district are divided as to whether Rule 20 is

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same BitTorrent swarm.

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CV 11-01956 EDL, 2011 U.S. Dist. LEXIS 105229, at *2 (N.D. Cal.

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Aug. 3, 2011) (Rule 20 satisfied because defendants participated in

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a common BitTorrent swarm), with Third Degree Films v. Does 1-3577,

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No. C 11-02768 LB, 2011 U.S. Dist. LEXIS 128030, at *9 (N.D. Cal.

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United States District Court

satisfied by virtue of the fact that defendants were part of the

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For the Northern District of California

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Nov. 4, 2011) (Rule 20 not satisfied even though defendants were

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part of a common swarm) and Diabolic Video Prods., Inc. v. Does 1-

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2099, No. 10-CV-5865-PSG, 2011 U.S. Dist. LEXIS 58351, at *10-11

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(N.D. Cal. May 31, 2011) (same).

Compare Hard Drive Prods. v. Does 1-42, No.

Here, the Doe Defendants' alleged participation in the same

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swarm spanned approximately a four-month period from May 2011

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through August 2011.

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Doe Defendant who allegedly downloaded or uploaded a portion of the

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Motion Picture on May 11, 2011, a Doe Defendant who allegedly did

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the same on August 10, 2011, and over three thousand Doe Defendants

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who allegedly did the same in the interim, were engaged in the

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single transaction or series of closely-related transactions

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recognized under Rule 20.

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LEXIS 128030, at *9 (Even though defendants were allegedly part of

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same swarm, "permissive joinder is inappropriate, particularly

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given that 3,577 Doe defendants downloaded the protected work at

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various dates and times ranging from November 11, 2010, to June 1,

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2011.").

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See IP Log.

The Court cannot conclude that a

See Third Degree Films, 2011 U.S. Dist.

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B.

Other Factors Bearing on Whether Joinder is Proper

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In addition to the Rule 20(a) criteria, a court must examine

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whether permissive joinder "would comport with the principles of

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fundamental fairness or would result in prejudice to either side."

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Coleman v. Quaker Oats Co., 232 F.3d 1271, 1296 (9th Cir.

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2000)(internal quotation omitted).

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factors such as the motives of the party seeking joinder and

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whether joinder would confuse and complicate the issues for the

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parties involved.

Courts may also consider

IO Group, Inc. v. Does 1-435, No. C 10-4382 SI,

United States District Court

For the Northern District of California

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2011 U.S. Dist. LEXIS 14123, at *18 (N.D. Cal. Feb. 3, 2011); Hard

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Drive Prods., Inc. v. Does 1-188, No. C-11-01566 JCS, 2011 U.S.

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Dist. LEXIS 94319, at *17 (N.D. Cal. Aug. 23, 2011).

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Here, the Court finds that even if Rule 20 were satisfied,

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other concerns weigh against joinder.

First, joinder has the

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potential to produce an unfair result for some, if not many, Doe

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Defendants.

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subscribers whose internet connection was allegedly used to pirate

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the Motion Picture.

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however, the ISP subscriber to whom a certain IP address was

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assigned may not be the same person who used the Internet

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connection for illicit purposes.

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John Doe 1 could be an innocent parent whose internet access was

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abused by her minor child, while John Doe 2 might share a computer

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with a roommate who infringed Plaintiff's works."

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Films, 2011 U.S. Dist. LEXIS 128030, at *9.

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Defendants as ISP subscribers who were assigned certain IP

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addresses, instead of the actual Internet users who allegedly

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engaged in infringing activity, "Plaintiff's sought-after discovery

Plaintiff defines Doe Defendants as the ISP

Compl. ¶ 5.

As many courts have noted,

For example, "[ISP] subscriber

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Third Degree

By defining Doe

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has the potential to draw numerous innocent internet users into the

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litigation, placing a burden upon them that weighs against allowing

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the discovery as designed."

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No. C-11-3826 DMR, 2011 U.S. Dist. LEXIS 132449, at *6 (N.D. Cal.

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Nov. 16, 2011).

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Application, Plaintiff would likely send settlement demands to the

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individuals whom the ISP identified as the IP subscriber.2

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individual -- whether guilty of copyright infringement or not --

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would then have to decide whether to pay money to retain legal

Hard Drive Prods., Inc. v. Does 1-130,

If the Court were to grant Plaintiff's

"That

United States District Court

For the Northern District of California

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assistance to fight the claim that he or she illegally downloaded

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sexually explicit materials, or pay the money demanded.

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creates great potential for a coercive and unjust 'settlement.'"

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Id. at *9.

This

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Indeed, the Court is concerned that Plaintiff's motive for

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seeking joinder of over three thousand Doe Defendants in one action

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may be precisely to coerce such settlements.

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2011 U.S. Dist. LEXIS 14123, at *19.

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knows, trial of a suit with thousands of individual defendants

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would present unmanageable difficulties.

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these mass copyright infringement suits are resolved through

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settlement once the plaintiff secures the information identifying

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the Does.

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this action has filed at least ten other mass copyright

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infringement suits against large numbers of Doe defendants.

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Patrick Collins, Inc. v. Does 1-3757, No. C 10-05886 LB, 2011 U.S.

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Dist. LEXIS 128029, at *6-7 (N.D. Cal. Nov. 4, 2011).

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Id.

See IO Group, Inc.,

As Plaintiff's counsel surely

The vast majority of

As Judge Beeler has noted, Plaintiff's counsel in

See

The court in

Indeed, Plaintiff has already sent settlement demands to the ISPs
with a request that they be forwarded to the subscribers. Nicolini
Decl. ¶ 21.
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that no plaintiff ever filed proof of service upon a single

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defendant, even after a number of defendants were identified and

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settled with plaintiffs.

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"appear[ed] content to force settlements without incurring any of

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the burdens involved in proving their cases."

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appears that Plaintiff's motive in joining over three thousand

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defendants in one action is to keep its own litigation costs down

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in hopes that defendants will quickly agree to a settlement.

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United States District Court

Patrick Collins reviewed the dockets in those cases and determined

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For the Northern District of California

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However, "while the courts favor settlements, filing one mass

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action in order to identify hundreds of doe defendants through pre-

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service discovery and facilitate mass settlement, is not what the

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joinder rules were established for."

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omitted).

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Id. at *7.

Instead, the plaintiffs

Id.

It therefore

Id. (internal quotation

Additionally, the Court finds that Plaintiff would not suffer

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undue prejudice by severing Doe Defendants 2-3036 and dismissing

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them from the case without prejudice.

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illegal download identified in Plaintiff's IP Log is May 2011.

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Under 17 U.S.C. § 507, the statute of limitations of a civil

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copyright action is three years after the claim accrued.

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Plaintiff has ample time to file individual lawsuits should it

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choose to do so.

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sent notices to each of the ISPs at issue, and requested that the

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ISPs forward those notices to the addresses of the subscribers

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associated with each allegedly infringing IP address.

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Decl. ¶ 21.

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where the accused infringer can contact CEG to arrange for

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settlement.

The earliest date of an

Thus,

Furthermore, Plaintiff's contractor CEG already

Nicolini

Each notice included, among other things, an address

Id.

Thus, Plaintiff may obtain, and indeed may have

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already obtained, settlements from many of the alleged infringers

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without Court-ordered discovery.3
Plaintiff argues that the Court should not rule on whether

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joinder is proper at this stage in the case.

Application at 11.

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Plaintiff does not flesh out this argument, but it provides a full-

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page block quote from Call of the Wild Movie, LLC v. Does 1-1,062,

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770 F. Supp. 2d 332, 344-345 (D.D.C. 2011), in which Judge Howell

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reasons that considering severance at this juncture would introduce

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"significant obstacles in [plaintiffs'] efforts to protect their

United States District Court

For the Northern District of California

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copyrights from illegal file-sharers and this would only needlessly

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delay their cases."

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plaintiffs would need to file thousands of separate lawsuits, pay

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the associated filing fees, and then move to issue separate

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subpoenas to ISPs in search of each defendant's identifying

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information.

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potential for coercing unjust settlements from innocent defendants

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trumps Plaintiff's interest in maintaining low litigation costs.

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Moreover, other courts and commentators have noted the flipside of

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Judge Howell's argument.

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decision on joinder in lawsuits similar to this action results in

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lost revenue of perhaps millions of dollars (from lost filing fees)

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and only encourages [plaintiffs in copyright actions] to join (or

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misjoin) as many doe defendants as possible."

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Dist. LEXIS 14123, at *20 n.5 (citation omitted).

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Id.

Judge Howell proceeds to explain that the

Be this as it may, the Court finds that the

Namely, "a consequence of postponing a

IO Group, 2011 U.S.

The IP addresses listed in the IP log correspond to those
subscribers who had not yet settled as of the time the Complaint
was filed. Nicolini Decl. ¶ 21.
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V.

CONCLUSION

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For the reasons stated above, the court GRANTS IN PART

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Plaintiff SBO Pictures, Inc.'s Ex Parte Application for Leave to

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Take Limited Discovery.

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Plaintiff shall serve on Doe 1's ISP a subpoena in the form

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attached as Exhibit 1 to Plaintiff's Application.

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shall include a copy of the Complaint and this Order.

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shall have thirty (30) days from the date of service upon it to

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serve Doe 1 with a copy of the subpoena, the Complaint, and this

Within ten (10) days of this Order,

The subpoena
The ISP

United States District Court

For the Northern District of California

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Order.

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including written notice sent to Doe 1's last known address,

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transmitted either by first-class mail or via overnight service.

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The ISP and Doe 1 each shall have thirty (30) days from the date of

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service upon them to file any motions in this Court contesting the

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subpoena (including a motion to quash or modify the subpoena).

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that thirty-day period lapses without Doe 1 or the ISP contesting

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the subpoena, then the ISP shall have ten (10) days to produce to

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Plaintiff the information responsive to the subpoena with respect

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to Doe 1.

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The ISP may serve Doe 1 using any reasonable means,

If

The ISP shall preserve all subpoenaed information pending the

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ISP's delivering such information to Plaintiff, or the final

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resolution of a timely filed and granted motion to quash the

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subpoena.

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to the subpoena solely to protect its rights under the Copyright

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Act, 17 U.S.C. § 101, et seq.

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Plaintiff may use any information disclosed in response

It is further ORDERED that Doe Defendants 2-3036 are SEVERED

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from this action, and Plaintiff's claims against Doe Defendants 2-

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3036 are DISMISSED without prejudice for improper joinder.

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Lastly, Plaintiff asks that the Court enlarge time for

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Plaintiff to serve process on Doe Defendants until 180 days after

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the date of this Order due to the delays involved in issuing

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subpoenas to ISPs, receiving responses to those subpoenas, and

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subsequently serving Doe Defendants.4

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Defendant remains in this action, the timeline set forth above

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demonstrates that an enlargement of time is necessary.

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Accordingly, the Court GRANTS Plaintiff's Application to Enlarge

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Time.
Plaintiff also requests that no Case Management Conference be

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United States District Court

For the Northern District of California

Even though only one Doe

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held until approximately 210 days from the date of this Order in

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order to allow for service of process and Doe Defendant's response.

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Accordingly, the Case Management Conference currently scheduled for

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December 9, 2011 is hereby continued to July 27, 2012, at 10:00

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a.m. in Courtroom 1, on the 17th floor, U.S. Courthouse, 450 Golden

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Gate Avenue, San Francisco, CA 94102.

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Joint Case Management Statement with the Court at least seven (7)

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days prior to the Conference.

The parties shall file a

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IT IS SO ORDERED.

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Dated:

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November 30, 2011
UNITED STATES DISTRICT JUDGE

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Plaintiff filed an Application for Enlargement of Time to Serve
Defendants along with its Application for Leave to Take Limited
Discovery. ECF No. 2.
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