Contra Piracy v. Does 1 - 2919

Filing 10

ORDER re 9 Brief, filed by Contra Piracy. Signed by Judge Elizabeth D Laporte on 6/20/2013. (knm, COURT STAFF) (Filed on 6/21/2013)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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CONTRA PIRACY

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Plaintiff,

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ORDER ON PLAINTIFF’S BRIEF

DOES 1-2919
Defendants.
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For the Northern District of California

United States District Court

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v.

No. C-13-01133 EDL

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I.

Introduction

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In this BitTorrent copyright infringement case, the Court denied Plaintiff’s ex parte motion for

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early discovery due to serious questions regarding Plaintiff’s standing to sue for copyright infringement.

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(Dkt. 8.) The Court ordered Plaintiff to show cause why this action should not be dismissed for lack of

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subject matter jurisdiction in light of the complaint’s allegations that Plaintiff held only “enforcement

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rights” in the copyrighted work. (Id.) The Court further ordered Plaintiff to provide the Court “with

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copies of all documents related to Plaintiff’s ownership of any rights in the work at issue, including any

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and all assignment and transfer agreements or other documents that relate to the rights and

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responsibilities of Plaintiff with regard to the work at issue.” (Id.)

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On June 14, 2013, Plaintiff responded to the order to show cause. Plaintiff asserts that it has

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standing to sue for copyright infringement because it holds the rights to copy and distribute the

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copyrighted work over the P2P/BitTorrent protocol pursuant to a “Limited, Exclusive Assignment of

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Copyright Agreement.” (Pl.’s Br. at 2.) According to Plaintiff, it therefore owns an exclusive right

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under 17 U.S.C. § 106. In support of this argument, Plaintiff attaches a declaration from one of its

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employees and an assignment agreement between Plaintiff and the “de facto owner of the copyright,”

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Hannibal Inc. d/b/a Hannibal Pictures.

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It is apparent from Plaintiff’s brief, the attached declaration, and the assignment agreement,

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however, that the assignment is not the only contract between Plaintiff and Hannibal Inc. involving the

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copyrighted work. All three documents refer to a related member services agreement under which

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Plaintiff provides “intellectual property rights management to Hannibal Pictures, including counter-

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piracy services and enforcement of copyrights, of Hannibal Pictures’ intellectual property.” (Pl.’s Br.

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at 2; Assignment Agreement at 1; Schneider Decl. ¶ 6.) Plaintiff has not provided the Court with this

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member services agreement, contrary to the Court’s previous order.

other documents related to Plaintiff’s rights in the copyrighted work by Monday, June 24, 2013.

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Plaintiff is warned that failure to comply with the Court’s order a second time could lead to sanctions,

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For the Northern District of California

The Court ORDERS Plaintiff to provide the Court with the member services agreement and any

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United States District Court

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including dismissal.

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The Court further ORDERS Plaintiff to file an additional declaration in support of its Brief on

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Order to Show Cause to address (1) an explanation of Hannibal Pictures’s status as the “de facto” owner

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of the copyright in the work at issue, with emphasis on the qualifier “de facto,” and (2) the extent to

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which the P2P/BitTorrent protocol is used to commercially distribute copyrighted works. This

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declaration should be filed with the Court no later than June 25, 2013.

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II.

Discussion

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Plaintiff’s failure to produce the member services agreement raises concerns. First, the Court

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ordered Plaintiff to provide the Court with “all documents related to Plaintiff’s ownership of any rights

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in the work at issue, including . . . other documents that relate to the rights and responsibilities of

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Plaintiff with regard to the work at issue.” The assignment agreement states on its face that it was made

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“in conjunction with the member services agreement between Contra Piracy and Assignor.”

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(Assignment Agreement at 1.) The member services agreement and any other pertinent documents

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should have been produced.

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Further, the Ninth Circuit in Righthaven LLC v. Hoehn emphasized that “[w]hen determining

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whether a contract has transferred exclusive rights, we look not just at the labels parties use but also at

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the substance and effect of the contract.” Case No. 11-16776, 2013 U.S. App. LEXIS 9413, at *8 (9th

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Cir. May 9, 2013.) There, the plaintiff purported to be the assignee of all rights sufficient for it to
enforce the copyrights at issue. Id. at *5. What the plaintiff could actually do with any assigned
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copyright was sharply limited by a separate agreement. Id. The Ninth Circuit held that the plaintiff

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lacked standing because the contractual limitations left it with nothing more than the bare right to sue.

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Id. at *10.

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This Court therefore cannot assess whether Plaintiff has standing without considering the

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member services agreement and any other agreement between Plaintiff, Hannibal Inc., or any other

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entity regarding the copyrighted work.

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Dated: June 20, 2013
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ELIZABETH D. LAPORTE
United States Chief Magistrate Judge

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For the Northern District of California

United States District Court

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