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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1 2 3 4 IN THE UNITED STATES DISTRICT COURT 5 FOR THE NORTHERN DISTRICT OF CALIFORNIA 6 7 8 SBO PICTURES, INC., d/b/a WICKED PICTURES, a California Corporation, 9 Plaintiff, For the Northern District of California United States District Court 10 v. 11 12 DOES 1-3036, Defendants. 13 ) ) ) ) ) ) ) ) ) ) ) ) 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 14 15 I. 16 INTRODUCTION On August 26, 2011, Plaintiff SBO Pictures, Inc., d/b/a Wicked 17 Pictures ("Plaintiff") filed a Complaint against 3036 unnamed 18 defendants ("Doe Defendants"), alleging copyright infringement. 19 ECF No. 1 ("Compl."). 20 Application for Leave to Take Limited Discovery, seeking leave to 21 take third-party discovery in order to unearth the identities of 22 Doe Defendants. 23 forth below, the Court GRANTS IN PART Plaintiff's Application, 24 SEVERS Doe Defendants 2-3036 from this action, and ORDERS that the 25 claims against Doe Defendants 2-3036 be dismissed due to improper 26 joinder. 27 /// 28 /// The same day, Plaintiff filed an Ex Parte ECF No. 4 ("Application"). For the reasons set 1 II. BACKGROUND Plaintiff is a motion picture production company. 2 Compl. ¶ 7. 3 Plaintiff alleges that it owns the copyright to the film "XXX 4 Avengers" ("the Motion Picture"). 5 Motion Picture is the subject of the valid Certificate of 6 Registration No. PA 1-745-351, issued June 10, 2011 by the United 7 States Copyright Office, and that Plaintiff owns the registration. 8 Id. ¶ 8. Id. Plaintiff claims that the Plaintiff alleges that Doe Defendants used "an online media 9 United States District Court For the Northern District of California 10 distribution system, in this case a BitTorrent network, a 'peer to 11 peer' network (or a 'P2P' network), to reproduce [and distribute] 12 at least one copy of the Motion Picture." 13 Plaintiff, "[e]ach Defendant has acted in cooperation with the 14 other Defendants by agreeing to provide, and actually providing, on 15 a P2P network an infringing reproduction of at least substantial 16 portions of Plaintiff's copyrighted Motion Picture, in anticipation 17 of the other Defendants doing likewise with respect to that work 18 and/or other works." 19 Defendants acted in concert by participating in the same BitTorrent 20 "swarm,"1 to achieve unlawful reproduction and distribution of the Id. ¶ 11. Id. ¶ 10. According to Plaintiff alleges that all Doe 21 22 23 24 25 26 27 28 1 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 2 1 Motion Picture. Id. Plaintiff alleges that Doe Defendants' 2 actions have violated Plaintiff's rights under the Copyright Act, 3 17 U.S.C. §§ 101, et seq. 4 Plaintiff attaches to the Complaint a list allegedly 5 containing the Internet Protocol ("IP") addresses of each Doe 6 Defendant, the date and time of each alleged infringement, and the 7 Internet Service Provider ("ISP") associated with each IP address. 8 Compl. Ex. A ("IP Log"). 9 Enforcement Group ("CEG"), declares that through monitoring Plaintiff's contractor, Copyright United States District Court For the Northern District of California 10 Internet-based infringement of Plaintiff's copyrighted content, it 11 confirmed that each Doe Defendant reproduced at least a substantial 12 portion of the Motion Picture. Nicolini Decl. ¶¶ 17-19, 22. Plaintiff argues that due to the anonymous nature of the peer- 13 14 to-peer file distribution system used by Doe Defendants, it can 15 only identify the names and addresses of individuals associated 16 with these IP addresses by subpoenaing the ISPs. 17 9. 18 of ISPs to compel them to provide the name, address, telephone 19 number, and e-mail address of each Doe Defendant. 20 Application Ex. 1 ("Sample Subpoena"). Application at 6, Plaintiff seeks leave to serve third-party subpoenas on dozens See IP Log; 21 22 23 III. LEGAL STANDARD Generally, a party may not initiate discovery before the 24 parties have met and conferred pursuant to Federal Rule of Civil 25 Procedure 26(f). 26 "for the convenience of parties and witnesses and in the interests However, a court may authorize earlier discovery 27 28 peer makes those portions available to other peers in the swarm. Id. 3 1 of justice." 2 demonstrate good cause for earlier discovery. 3 v. Tokyo Electron Am., Inc., 208 F.R.D. 273, 276 (N.D. Cal. 2002). 4 "Good cause may be found where the need for expedited discovery, in 5 consideration of the administration of justice, outweighs the 6 prejudice to the responding party." 7 8 9 United States District Court For the Northern District of California 10 11 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. 12 13 Gillespie v. Civiletti, 629 F.2d 637, 642 (9th Cir. 1980). 14 leave to conduct discovery to identify a Doe defendant, the moving 15 party must: (1) identify the defendant with enough specificity to 16 allow the Court to determine whether the defendant is a real person 17 or entity who could be sued in federal court; (2) recount the steps 18 taken to locate the defendant; (3) show that its action could 19 survive a motion to dismiss; and (4) file a request for discovery 20 with the Court identifying the persons or entities on whom 21 discovery process might be served and for which there is a 22 reasonable likelihood that the discovery process will lead to 23 identifying information. 24 F.R.D. 573, 578-80 (N.D. Cal. 1999) ("Columbia Ins."). 25 For Columbia Ins. Co. v., 185 In the context of parties seeking discovery in alleged online 26 piracy, the court must balance "the need to provide injured parties 27 with [a] forum in which they may seek redress for grievances" 28 against "the legitimate and valuable right [of Internet users] to 4 1 participate in online forums anonymously or pseudonymously . . . 2 without fear that someone who wishes to harass or embarrass them 3 can file a frivolous lawsuit and thereby gain the power of the 4 court's order to discover their identity." Id. at 578. 5 6 7 IV. DISCUSSION The Court is satisfied that Plaintiff has met the first, finds that Plaintiff has not established that it could satisfy the 10 United States District Court second, and fourth Columbia Insurance factors. 9 For the Northern District of California 8 third Columbia Insurance factor because it has not shown that the 11 Complaint could survive a motion to dismiss based on improper 12 joinder. However, the Court 13 A. Permissive Joinder Under Rule 20 14 Federal Rule of Civil Procedure 20(a) provides that parties 15 may be joined in a single lawsuit where the claims against them 16 arise from a single transaction or a series of closely related 17 transactions. 18 joinder, a court may sever the misjoined parties, "so long as no 19 substantial right will be prejudiced by the severance." 20 v. Rogers, 130 F.3d 1348, 1350 (9th Cir. 1997) (citation omitted); 21 see Fed. R. Civ. P. 21 ("Misjoinder of parties is not a ground for 22 dismissing an action."). 23 If defendants do not satisfy the test for permissive Coughlin In this case, the Court finds that Plaintiff has failed to 24 satisfy the Rule 20 requirements for permissive joinder. 25 argues that the Doe Defendants are properly joined because they 26 infringed the same copyrighted work in cooperation with each other 27 by exchanging portions of the work with one another (i.e., they 28 were a part of the same "swarm"), and the nature of the BitTorrent 5 Plaintiff 1 technology requires concerted action with regard to each swarm. 2 Application at 12-14. Courts in this district are divided as to whether Rule 20 is 3 same BitTorrent swarm. 6 CV 11-01956 EDL, 2011 U.S. Dist. LEXIS 105229, at *2 (N.D. Cal. 7 Aug. 3, 2011) (Rule 20 satisfied because defendants participated in 8 a common BitTorrent swarm), with Third Degree Films v. Does 1-3577, 9 No. C 11-02768 LB, 2011 U.S. Dist. LEXIS 128030, at *9 (N.D. Cal. 10 United States District Court satisfied by virtue of the fact that defendants were part of the 5 For the Northern District of California 4 Nov. 4, 2011) (Rule 20 not satisfied even though defendants were 11 part of a common swarm) and Diabolic Video Prods., Inc. v. Does 1- 12 2099, No. 10-CV-5865-PSG, 2011 U.S. Dist. LEXIS 58351, at *10-11 13 (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 14 15 swarm spanned approximately a four-month period from May 2011 16 through August 2011. 17 Doe Defendant who allegedly downloaded or uploaded a portion of the 18 Motion Picture on May 11, 2011, a Doe Defendant who allegedly did 19 the same on August 10, 2011, and over three thousand Doe Defendants 20 who allegedly did the same in the interim, were engaged in the 21 single transaction or series of closely-related transactions 22 recognized under Rule 20. 23 LEXIS 128030, at *9 (Even though defendants were allegedly part of 24 same swarm, "permissive joinder is inappropriate, particularly 25 given that 3,577 Doe defendants downloaded the protected work at 26 various dates and times ranging from November 11, 2010, to June 1, 27 2011."). 28 /// See IP Log. The Court cannot conclude that a See Third Degree Films, 2011 U.S. Dist. 6 1 B. Other Factors Bearing on Whether Joinder is Proper 2 In addition to the Rule 20(a) criteria, a court must examine 3 whether permissive joinder "would comport with the principles of 4 fundamental fairness or would result in prejudice to either side." 5 Coleman v. Quaker Oats Co., 232 F.3d 1271, 1296 (9th Cir. 6 2000)(internal quotation omitted). 7 factors such as the motives of the party seeking joinder and 8 whether joinder would confuse and complicate the issues for the 9 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 10 2011 U.S. Dist. LEXIS 14123, at *18 (N.D. Cal. Feb. 3, 2011); Hard 11 Drive Prods., Inc. v. Does 1-188, No. C-11-01566 JCS, 2011 U.S. 12 Dist. LEXIS 94319, at *17 (N.D. Cal. Aug. 23, 2011). 13 Here, the Court finds that even if Rule 20 were satisfied, 14 other concerns weigh against joinder. First, joinder has the 15 potential to produce an unfair result for some, if not many, Doe 16 Defendants. 17 subscribers whose internet connection was allegedly used to pirate 18 the Motion Picture. 19 however, the ISP subscriber to whom a certain IP address was 20 assigned may not be the same person who used the Internet 21 connection for illicit purposes. 22 John Doe 1 could be an innocent parent whose internet access was 23 abused by her minor child, while John Doe 2 might share a computer 24 with a roommate who infringed Plaintiff's works." 25 Films, 2011 U.S. Dist. LEXIS 128030, at *9. 26 Defendants as ISP subscribers who were assigned certain IP 27 addresses, instead of the actual Internet users who allegedly 28 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 7 Third Degree By defining Doe 1 has the potential to draw numerous innocent internet users into the 2 litigation, placing a burden upon them that weighs against allowing 3 the discovery as designed." 4 No. C-11-3826 DMR, 2011 U.S. Dist. LEXIS 132449, at *6 (N.D. Cal. 5 Nov. 16, 2011). 6 Application, Plaintiff would likely send settlement demands to the 7 individuals whom the ISP identified as the IP subscriber.2 8 individual -- whether guilty of copyright infringement or not -- 9 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 10 assistance to fight the claim that he or she illegally downloaded 11 sexually explicit materials, or pay the money demanded. 12 creates great potential for a coercive and unjust 'settlement.'" 13 Id. at *9. This 14 Indeed, the Court is concerned that Plaintiff's motive for 15 seeking joinder of over three thousand Doe Defendants in one action 16 may be precisely to coerce such settlements. 17 2011 U.S. Dist. LEXIS 14123, at *19. 18 knows, trial of a suit with thousands of individual defendants 19 would present unmanageable difficulties. 20 these mass copyright infringement suits are resolved through 21 settlement once the plaintiff secures the information identifying 22 the Does. 23 this action has filed at least ten other mass copyright 24 infringement suits against large numbers of Doe defendants. 25 Patrick Collins, Inc. v. Does 1-3757, No. C 10-05886 LB, 2011 U.S. 26 Dist. LEXIS 128029, at *6-7 (N.D. Cal. Nov. 4, 2011). 27 2 28 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. 8 that no plaintiff ever filed proof of service upon a single 3 defendant, even after a number of defendants were identified and 4 settled with plaintiffs. 5 "appear[ed] content to force settlements without incurring any of 6 the burdens involved in proving their cases." 7 appears that Plaintiff's motive in joining over three thousand 8 defendants in one action is to keep its own litigation costs down 9 in hopes that defendants will quickly agree to a settlement. 10 United States District Court Patrick Collins reviewed the dockets in those cases and determined 2 For the Northern District of California 1 However, "while the courts favor settlements, filing one mass 11 action in order to identify hundreds of doe defendants through pre- 12 service discovery and facilitate mass settlement, is not what the 13 joinder rules were established for." 14 omitted). 15 Id. at *7. Instead, the plaintiffs Id. It therefore Id. (internal quotation Additionally, the Court finds that Plaintiff would not suffer 16 undue prejudice by severing Doe Defendants 2-3036 and dismissing 17 them from the case without prejudice. 18 illegal download identified in Plaintiff's IP Log is May 2011. 19 Under 17 U.S.C. § 507, the statute of limitations of a civil 20 copyright action is three years after the claim accrued. 21 Plaintiff has ample time to file individual lawsuits should it 22 choose to do so. 23 sent notices to each of the ISPs at issue, and requested that the 24 ISPs forward those notices to the addresses of the subscribers 25 associated with each allegedly infringing IP address. 26 Decl. ¶ 21. 27 where the accused infringer can contact CEG to arrange for 28 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 9 1 already obtained, settlements from many of the alleged infringers 2 without Court-ordered discovery.3 Plaintiff argues that the Court should not rule on whether 3 4 joinder is proper at this stage in the case. Application at 11. 5 Plaintiff does not flesh out this argument, but it provides a full- 6 page block quote from Call of the Wild Movie, LLC v. Does 1-1,062, 7 770 F. Supp. 2d 332, 344-345 (D.D.C. 2011), in which Judge Howell 8 reasons that considering severance at this juncture would introduce 9 "significant obstacles in [plaintiffs'] efforts to protect their United States District Court For the Northern District of California 10 copyrights from illegal file-sharers and this would only needlessly 11 delay their cases." 12 plaintiffs would need to file thousands of separate lawsuits, pay 13 the associated filing fees, and then move to issue separate 14 subpoenas to ISPs in search of each defendant's identifying 15 information. 16 potential for coercing unjust settlements from innocent defendants 17 trumps Plaintiff's interest in maintaining low litigation costs. 18 Moreover, other courts and commentators have noted the flipside of 19 Judge Howell's argument. 20 decision on joinder in lawsuits similar to this action results in 21 lost revenue of perhaps millions of dollars (from lost filing fees) 22 and only encourages [plaintiffs in copyright actions] to join (or 23 misjoin) as many doe defendants as possible." 24 Dist. LEXIS 14123, at *20 n.5 (citation omitted). 25 /// 26 /// 27 3 28 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. 10 1 V. CONCLUSION 2 For the reasons stated above, the court GRANTS IN PART 3 Plaintiff SBO Pictures, Inc.'s Ex Parte Application for Leave to 4 Take Limited Discovery. 5 Plaintiff shall serve on Doe 1's ISP a subpoena in the form 6 attached as Exhibit 1 to Plaintiff's Application. 7 shall include a copy of the Complaint and this Order. 8 shall have thirty (30) days from the date of service upon it to 9 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 10 Order. 11 including written notice sent to Doe 1's last known address, 12 transmitted either by first-class mail or via overnight service. 13 The ISP and Doe 1 each shall have thirty (30) days from the date of 14 service upon them to file any motions in this Court contesting the 15 subpoena (including a motion to quash or modify the subpoena). 16 that thirty-day period lapses without Doe 1 or the ISP contesting 17 the subpoena, then the ISP shall have ten (10) days to produce to 18 Plaintiff the information responsive to the subpoena with respect 19 to Doe 1. 20 The ISP may serve Doe 1 using any reasonable means, If The ISP shall preserve all subpoenaed information pending the 21 ISP's delivering such information to Plaintiff, or the final 22 resolution of a timely filed and granted motion to quash the 23 subpoena. 24 to the subpoena solely to protect its rights under the Copyright 25 Act, 17 U.S.C. § 101, et seq. 26 Plaintiff may use any information disclosed in response It is further ORDERED that Doe Defendants 2-3036 are SEVERED 27 from this action, and Plaintiff's claims against Doe Defendants 2- 28 3036 are DISMISSED without prejudice for improper joinder. 11 1 Lastly, Plaintiff asks that the Court enlarge time for 2 Plaintiff to serve process on Doe Defendants until 180 days after 3 the date of this Order due to the delays involved in issuing 4 subpoenas to ISPs, receiving responses to those subpoenas, and 5 subsequently serving Doe Defendants.4 6 Defendant remains in this action, the timeline set forth above 7 demonstrates that an enlargement of time is necessary. 8 Accordingly, the Court GRANTS Plaintiff's Application to Enlarge 9 Time. Plaintiff also requests that no Case Management Conference be 10 United States District Court For the Northern District of California Even though only one Doe 11 held until approximately 210 days from the date of this Order in 12 order to allow for service of process and Doe Defendant's response. 13 Accordingly, the Case Management Conference currently scheduled for 14 December 9, 2011 is hereby continued to July 27, 2012, at 10:00 15 a.m. in Courtroom 1, on the 17th floor, U.S. Courthouse, 450 Golden 16 Gate Avenue, San Francisco, CA 94102. 17 Joint Case Management Statement with the Court at least seven (7) 18 days prior to the Conference. The parties shall file a 19 IT IS SO ORDERED. 20 21 Dated: 22 23 November 30, 2011 UNITED STATES DISTRICT JUDGE 24 25 26 27 28 4 Plaintiff filed an Application for Enlargement of Time to Serve Defendants along with its Application for Leave to Take Limited Discovery. ECF No. 2. 12

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