Adobe Systems Incorporated v. Gorsline et al

Filing 15

Order by Magistrate Judge Laurel Beeler granting 13 Administrative Motion for Expedited Discovery. Adobe shall file a proposed subpoena for the court's approval by Friday, August 4, 2017.(lblc1S, COURT STAFF) (Filed on 7/21/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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San Francisco Division

United States District Court
Northern District of California

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ADOBE SYSTEMS INCORPORATED,
Plaintiff,

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ORDER GRANTING PLAINTIFF’S
MOTION FOR EXPEDITED DISCOVERY

v.

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CHRIS GORSLINE, et al.,

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Case No. 17-cv-03675-RS (LB)

Defendants.

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Re: ECF No. 13

INTRODUCTION
Adobe owns copyrights and trademarks for its software.1 It alleges that Chris Gorsline,

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Lindsay Duvanski, the entity wxonline, and Does 1–10 sold counterfeit and unauthorized software

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using eBay, PayPal, Bonanza, and other online services.2 Adobe has been unable to discover the

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true identities of the defendants.3 It seeks to obtain limited discovery from the third-party

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providers used to sell the counterfeit software sufficient to identify the defendants.4 Because

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Adobe demonstrates good cause for the discovery, the court grants the motion.

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See generally Compl. ECF No. 1 at 8–9 (¶¶ 24–25). Record citations refer to material in the
Electronic Case File (“ECF”); pinpoint citations are to the ECF-generated page numbers at the top of
the documents.
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Compl. at 13–20 (¶¶ 45–79).

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Huerter Decl. – ECF No. 13-1 at 2–7 (¶¶ 5–18).

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Motion for Expedited Discovery – ECF No. 13.

ORDER – No. 17-cv-03675-RS (LB)

STATEMENT

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Adobe develops and distributes its copyrighted software using trademarks, such as its “Adobe”

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and “Acrobat” marks.5 The defendants used online platforms, such as eBay, to sell counterfeit and

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unauthorized versions of Adobe’s software without its permission.6 The defendants used fake

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receipts to obtain replacement serial numbers that they then affixed to their counterfeit software.7

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The defendants also gave Adobe false contact information to become authorized resellers in an

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effort to appear legitimate when selling their counterfeit software.8 Adobe asserts claims against

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the defendants for trademark infringement, trademark dilution, false designation of origin,

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copyright infringement, and fraud.
Adobe determined the defendants sold infringing software using the seller IDs voodoo1337,

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United States District Court
Northern District of California

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robyne_26, and stormlabs, to name a few.9 The defendants processed payments through PayPal

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using email addresses including [e-mail] and

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[e-mail].10 They also used the websites integritysystembuilders.com,

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3dfxgraphics.com, and graphicstechnica.com, which they registered through Domains by Proxy,

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LLC to mask their identities.11 The defendants obscured their physical location by shipping

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counterfeit software through the shipping service Shipito, LLC.12
Adobe moves for expedited discovery.13 It asks the court for permission to serve eBay, PayPal,

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Bonzanza.com, Domains by Proxy, and Shipito with subpoenas for the production of “documents

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sufficient to conclusively identify and locate the defendants doing business under” the seller IDs

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Compl. at 5–6 (¶¶ 19–24); Compl., Exs. A–B – ECF Nos. 1-1, 1-2.

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Id. at 12– 13 (¶¶ 37–44).

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Id. at 27–28 (¶¶ 120–29).

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Id. at 28–29 (¶¶ 130–46).

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Huerter Decl. – ECF No. 13-1 at 6 (¶ 20).

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Id.

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Id.

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Id.

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Motion for Expedited Discovery – ECF No. 13.

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ORDER — No. 17-cv-03675-RS (LB)

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and aliases it identified.14

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GOVERNING LAW

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A court may authorize expedited discovery before the Rule 26(f) conference for the parties’
and witnesses’ convenience and in the interest of justice. Fed. R. Civ. P. 26(d). Courts within the

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Ninth Circuit generally consider whether a plaintiff has shown “good cause” for early discovery.

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See, e.g., IO Grp., Inc. v. Does 1–65, No. 10-CV-4377-SC, 2010 WL 4055667, at *2 (N.D. Cal.

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Oct. 15, 2010); Semitool, Inc. v. Tokyo Electron Am., Inc., 208 F.R.D. 273, 275–77 (N.D. Cal.

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2002); Tex. Guaranteed Student Loan Corp. v. Dhindsa, No. 10-CV-0035, 2010 WL 2353520, at

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*2 (E.D. Cal. June 9, 2010); Yokohama Tire Corp. v. Dealers Tire Supply, Inc., 202 F.R.D. 612,

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United States District Court
Northern District of California

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613–14 (D. Ariz. 2001) (collecting cases and standards). “Good cause may be found where the

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need for expedited discovery, in consideration of the administration of justice, outweighs the

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prejudice to the responding party.” Semitool, 208 F.R.D. at 276.

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In evaluating whether a plaintiff establishes good cause to learn the identity of a defendant

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through expedited discovery, courts examine whether the plaintiff: (1) identifies the defendant

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with sufficient specificity that the court can determine that the defendant is a real person who can

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be sued in federal court; (2) recounts the steps taken to locate and identify the defendant;

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(3) demonstrates that the action can withstand a motion to dismiss; and (4) shows that the

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discovery is reasonably likely to lead to identifying information that will permit service of process.

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Columbia Ins. Co. v. seescandy.com, 185 F.R.D. 573, 578–80 (N.D. Cal. 1999) (internal citations

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omitted). “‘[W]here the identity of alleged defendants [is not] known prior to the filing of a

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complaint[,] the plaintiff should be given an opportunity through discovery to identify the

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unknown defendants, unless it is clear that discovery would not uncover the identities, or that the

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complaint would be dismissed on other grounds.’” Wakefield v. Thompson, 177 F.3d 1160, 1163

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(9th Cir. 1999) (quoting Gillespie v. Civiletti, 629 F.2d 637, 642 (9th Cir. 1980)).

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See Proposed Order – ECF No. 13-19 at 2.

ORDER — No. 17-cv-03675-RS (LB)

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ANALYSIS

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Adobe has made a sufficient showing under each of the four seescandy.com factors listed

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above to establish good cause.
First, Adobe identifies the defendants with sufficient specificity that the court can determine

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that they are real people who can be sued in federal court. Adobe’s investigators purchased

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counterfeit software from the defendants, identified online aliases they used to sell the software,

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and even corresponded with the defendants via email.15
Second, Adobe recounts the steps taken to locate and identify the defendants. Adobe identified

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email addresses the defendants used in connection with eBay and PayPal.16 The defendants
refused to provide their contact information when Adobe corresponded with them via email.17

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United States District Court
Northern District of California

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Adobe also attempted to locate the defendants through a fax number they used and the address

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from which they shipped the counterfeit software.18 In response, Adobe “was contacted by a

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woman who claimed that her elderly father’s identity had been stolen and was being used in

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connection with the eBay account ‘stormlabs.’”19 The defendants used stolen identifying

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information and third-party services, such as Domains by Proxy, to mask their identities.20 Adobe

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attempted to use the (presumably false) identifying information to locate defendants through

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“general Internet searches, public records databases, people finder tools, and various other

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methods.”21 Adobe followed available leads, but could not identify the defendants.
Third, Adobe has demonstrated that its copyright, trademark, and fraud claims could withstand

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a motion to dismiss. Adobe alleges that it holds the copyrights for its software and that the

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defendants copied its software without its permission, which is sufficient to state a claim for

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Huerter Decl. – ECF No. 13-1 at 4–5 (¶¶ 13–15, 18–19); Huerter Decl., Exs. A–B, F–H, J, L–N, Q –
ECF Nos. 13-2 to 13-3, 13-7 to 13-9, 13-11, 13-13 to 13-15, 13-18.

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Huerter Decl. ECF No. 13-1 at 2–3 (¶¶ 3, 6); Huerter Decl., Ex. O – ECF No. 13-16.

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Huerter Decl. ECF No. 13-1 at 2–3 (¶¶ 3, 6).

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Id. at 5 (¶¶ 16–19); Huerter Decl., Ex. P – ECF No. 13-17.

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Huerter Decl. – ECF No. 13-1 at 5 (¶ 19).

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Id. at 3–6 (¶¶ 7–10, 12); Huerter Decl., Exs. C–E, I, K – ECF Nos. 13-4 to 13-6, 13-10, 13-12.

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Huerter Decl. – ECF No. 13-1 at 5 (¶ 19).

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ORDER — No. 17-cv-03675-RS (LB)

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copyright infringement.22 See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1159 (9th Cir.

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2007); 17 U.S.C. § 501(a). Adobe adequately alleges that the defendants failed to obtain its

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authorization to commercially distribute, market, and sell products bearing its trademarks and that

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the defendants’ use and sale of such counterfeit items is likely to cause confusion.23 See Adobe

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Systems, Inc. v. A & S Electronics, Inc., 153 F. Supp. 3d 1136, 1142 (N.D. Cal. Dec. 29, 2015)

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(Adobe stated viable trademark claims against infringing entity that used its marks and reseller

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agreement to appear legitimate); see also Adobe Systems, Inc. v. Blue Source Group, Inc., 125 F.

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Supp. 3d 945, 969–70 (N.D. Cal. Aug. 31, 2015) (viable claim for trademark dilution alleged

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based on sale of counterfeit software bearing Adobe’s marks). Adobe alleges, with particularity,

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that the defendants intentionally provided false information to become authorized resellers and

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United States District Court
Northern District of California

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obtain replacement serial numbers and that its reasonable reliance on these misrepresentations

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caused it to suffer substantial financial harm and injury to its goodwill.24 This is sufficient to state

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a claim for fraud. See Vess v. Ciba-Geigy Corp. USA, 317 F.3d 1097, 1105 (9th Cir. 2003) (citing

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Fed. R. Civ. P. 9(b)).
Finally, Adobe shows that the discovery it seeks is reasonably likely to lead to identifying

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information that will permit service of process on the defendants. Adobe asserts eBay, PayPal,

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Bonzanza.com, Domains by Proxy, and Shipito, will likely know the defendants’ true identities

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and current contact information because records of this information are maintained in the ordinary

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course of business.25 Adobe states records held by PayPal are especially likely to contain the

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defendants’ true identities and contact information because they relied on this third party to

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process payments, including those tendered by Adobe’s investigators.26

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Compl. at 11–12, 26 (¶¶ 34–40, 113–18); Compl., Ex. B – ECF No. 1-2.

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Compl. at 3, 4, 12–14, 19–26 (¶¶ 14, 40–41, 44, 47, 75, 80–112).

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Compl. at 16, 21, 27–30 (¶¶ 57, 85, 119–52).

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Huerter Decl. ̶ ECF No. 13-1 at 6 (¶ 20).

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Id. at 4 (¶ 15).

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ORDER — No. 17-cv-03675-RS (LB)

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CONCLUSION

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Good cause appearing, the court grants Adobe’s motion for expedited discovery. The court

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directs Adobe to file a proposed subpoena for the court’s approval by August 4, 2017.

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IT IS SO ORDERED.

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Dated: July 21, 2017
______________________________________
LAUREL BEELER
United States Magistrate Judge

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United States District Court
Northern District of California

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ORDER — No. 17-cv-03675-RS (LB)

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