Facebook, Inc. v. Various, Inc. et al

Filing 41

ORDER by Magistrate Judge Donna M. Ryu DENYING 36 Letter Requesting Expedited Discovery. Signed by Magistrate Judge Donna M. Ryu on 06/16/2011. (dmrlc2, COURT STAFF) (Filed on 6/17/2011) Modified on 6/20/2011 (jlm, COURT STAFF).

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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For the Northern District of California

United States District Court

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FACEBOOK, INC.,

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Plaintiff,
No. C-11-01805-SBA (DMR)

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v.
OPINION AND ORDER ON
PLAINTIFF’S REQUEST FOR
EXPEDITED DISCOVERY

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VARIOUS, INC. ET AL.,

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Defendants.
___________________________________/

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Before the court is Plaintiff Facebook, Inc.’s (“Plaintiff” or “Facebook”) request for

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expedited discovery, submitted in the parties’ joint discovery letter of May 31, 2011. [Docket No. 36

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(“Letter”).] Plaintiff seeks limited discovery from Defendants Various, Inc., GMCI Internet

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Operations, Inc., Traffic Cat, Inc., and Friendfinder Networks, Inc. (“Named Defendants”) for the

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purpose of identifying as-of-yet unnamed defendants (“Unnamed Defendants”; together with Named

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Defendants, “Defendants”) and to facilitate its submission of a motion for preliminary injunction.

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Named Defendants oppose the request. For the reasons provided below, the court denies Plaintiff’s

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request.

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I. Plaintiff’s Position
Facebook filed suit in this Court on April 13, 2011 to enjoin Defendants’ “ongoing

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infringement of the famous FACEBOOK trademark to promote an online ‘adult’ networking service

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and affiliate program.” (Compl. ¶ 1.) In total, Facebook presents nine causes of action based upon

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Federal and California state law. (See Compl. ¶¶ 41-122.) Of particular importance to the pending

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request, Plaintiff claims that Named Defendants operate, inter alia, “a widespread infringing affiliate

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network that pays, and provides infringing promotional materials to, third party website operators,”

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i.e. Unnamed Defendants. (Letter 2 (citation omitted); see Compl. ¶¶ 9, 23, 26, 29-31, 33-34.)

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Plaintiff argues that the court should grant its request because “[Plaintiff] is unaware of the

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identities and/or contact information for [Unnamed Defendants].” (Letter 1.) According to Plaintiff,

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its investigations reveal that “more than 100 domain names” appear to participate in Named

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Defendants’ “affiliate program.” (Letter 2.) Plaintiff further avers that it cannot learn the identities

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of the domain names’ owners absent discovery, because “many of the domain names were registered
in the anonymous name of Domains by Proxy, and other listed owners appear[] to be false

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For the Northern District of California

United States District Court

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identities.” (Letter 2; see Letter 4.) Due to the financial relationships between Named and

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Unnamed Defendants, however, “Named Defendants will necessarily have contact and payment

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information for these individuals or entities.” (Letter 4.) Plaintiff thus seeks expedited discovery

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from Named Defendants so that it may obtain this information, identify Unnamed Defendants, and

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bring them into the litigation by amending the Complaint.

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Plaintiff also asserts that its intent to file a motion for preliminary injunction demonstrates

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the need for expedited discovery. (Letter 1.) It claims that Named and Unnamed Defendants

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continue to operate in concert, with the Unnamed Defendants’ “continu[ing] to use the FACEBOOK

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trademark in numerous domains and sites” and Named Defendants’ “continu[ing] to benefit from

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accepting traffic from [Unnamed] Defendants’ infringing sites.” (Letter 3.) Given this allegedly

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ongoing harm, Plaintiff states that it will file a motion for preliminary injunction “as soon as

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practicable” and, consequently, requires expedited discovery so that it may

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(1) identify and serve [Unnamed] Defendants within the time period contemplated by
Rule 4(m) [of the Federal Rules of Civil Procedure]; (2) ensure that the [Unnamed]
Defendants are bound by any preliminary injunction issued by the Court; and (3)
present the Court with a more complete record upon which to consider [its] motion
for preliminary injunction.
(Letter 3; see also Compl. ¶ 123 (stating Facebook’s intention to seek preliminary injunction).)

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II. Named Defendants’ Position

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Named Defendants oppose Plaintiff’s request for expedited discovery, lambasting it as a

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“fishing expedition to search for other entities to sue and to interfere with [Named Defendants’]

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business references.” (Letter 1.) More succinctly, they believe Plaintiff’s discovery requests to be

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overbroad. (Letter 2.) They also deny the existence of an “emergency” warranting expedited

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discovery, as Plaintiff has not filed a motion for preliminary injunctive relief, (Letter 2; accord

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Letter 6), although it has been “two and a half years since the allegedly infringing conduct and six

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months since the parties first started talking.” (Letter 8.) Moreover, they insist that Defendant

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Traffic Cat, Inc.’s voluntary decision to disable the facebookofsex.com website has rendered moot
the supposedly only valid basis for which Plaintiff could seek a preliminary injunction against

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For the Northern District of California

United States District Court

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Named Defendants. (Letter 6.)

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III. Standard of Review
A court will grant a motion for expedited discovery “upon a showing of good cause.” Am.

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Legalnet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1066 (C.D. Cal. 2009) (quoting In re Countrywide

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Fin. Corp. Derivative Litig., 542 F. Supp. 2d 1160, 1179 (C.D. Cal. 2008)) (quotation marks

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omitted); accord Semitool, Inc. v. Tokyo Electron Am., Inc., 208 F.R.D. 273, 275 (N.D. Cal. 2002).

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Good cause exists where “the need for expedited discovery, in consideration of the administration of

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justice, outweighs the prejudice to the responding party.” Am. Legalnet, Inc., 673 F. Supp. 2d at

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1066 (quoting In re Countrywide Fin. Corp. Derivative Litig., 542 F. Supp. 2d at 1179) (quotation

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marks omitted); accord Semitool, Inc., 208 F.R.D. at 276. The court must perform this evaluation in

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light of “the entirety of the record . . . and the reasonableness of the request in light of all the

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surrounding circumstances.” Semitool, Inc., 208 F.R.D. at 275 (citation & quotation marks omitted)

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(emphasis removed); see Am. Legalnet, Inc., 673 F. Supp. 2d at 1067. Factors that affect the court’s

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assessment of the reasonableness of a request include “(1) whether a preliminary injunction is

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pending; (2) the breadth of the discovery requests; (3) the purpose for requesting the expedited

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discovery; (4) the burden on the defendants to comply with the requests; and (5) how far in advance

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of the typical discovery process the request was made.” Am. Legalnet, Inc., 673 F. Supp. 2d at 1067

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(citation & quotation marks omitted). Even if the court grants a party expedited discovery, in the

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interests of justice, it may tailor its ruling to avoid “excessive or burdensome discovery.” Id.

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(citation & quotation marks omitted).

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IV. Discussion
Plaintiff has failed to demonstrate good cause for expedited discovery. Courts in this Circuit

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permit expedited discovery to identify unknown defendants usually when the plaintiff

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simultaneously can identify no defendants and legitimately fears that information leading to their

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whereabouts faces imminent destruction. See, e.g., UMG Recordings, Inc. v. Doe, No. C-08-1193,

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2008 WL 4104214, at *4 & n.3 (N.D. Cal. Sept. 3, 2008) (not reported in F. Supp.); Arista Records

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LLC v. Does 1-43, No. 07-CV-2357, 2007 WL 4538697, at *1 (S.D. Cal. Dec. 20, 2007) (not
reported in F. Supp.); Capitol Records, Inc. v. Doe, No. 07-CV-1570, 2007 WL 2429830, at *1 (S.D.

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For the Northern District of California

United States District Court

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Cal. Aug. 24, 2007) (not reported in F. Supp.). Plaintiff faces neither circumstance. Here, Plaintiff

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may obtain discovery to identify Unnamed Defendants during the normal course of discovery.

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Moreover, Plaintiff has not argued that relevant information may be in danger of destruction.

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Similarly, while courts often find good cause when confronted with a pending motion for

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preliminary injunction, Am. Legalnet, Inc., 673 F. Supp. 2d at 1066; Ellsworth Assocs., Inc. v.

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United States, 917 F. Supp. 841, 844 (D.D.C. 1996), they usually do not when presented with a

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party’s mere inclination to file such a motion. See Qwest Commc’ns Int’l, Inc. v. Worldquest

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Networks, Inc., 213 F.R.D. 418, 420 (D. Colo. 2003) (citing Gucci Am., Inc. v. Daffy’s, Inc., No. 00-

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4463, 2000 WL 1720738, at *5 (D.N.J. 2000) (denying request for expedited discovery where there

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was no pending motion for preliminary injunctive relief)). Nothing has prevented Plaintiff from

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filing a preliminary injunction, which it later could move to amend once it knew Unnamed

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Defendants’ identities.

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Finally, the court notes that Plaintiff’s discovery requests are so broad as to be implausibly

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tailored for the sole purposes of discerning Unnamed Defendants’ identities and crafting a motion

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for preliminary injunction. (See, e.g., Letter Ex. A at 6 (asking Named Defendants to “[I]DENTIFY

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EACH PERSON with

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DEFENDANTS’ MARK) (asking Named Defendants to “[d]escribe in detail any instances of actual

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confusion, mistake, or association between the DEFENDANTS’ MARK and the FACEBOOK MARKS”),

knowledge of the creation, design, development, selection, and adoption of

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otherwise indicate YOUR first use of DEFENDANTS’ MARK) (requesting that Named Defendants

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produce “[a]ll DOCUMENTS that refer to, reflect, mention, or otherwise indicate the timing and

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circumstances of YOUR first learning about the FACEBOOK MARKS) (requesting that Named

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Defendants produce “[a]ll DOCUMENTS that refer to, reflect, mention, or otherwise indicate the

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timing and circumstances of YOUR first learning about Plaintiff Facebook), 20 (seeking to depose

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Named Defendants about “[a]ny efforts made to determine whether DEFENDANTS’ MARKS would

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conflict with the intellectual property rights of third parties, including Facebook).) See Am.

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Legalnet, Inc., 673 F. Supp. 2d at 1068; Ellsworth Assocs., Inc., 917 F. Supp. at 844. For these

H

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R NIA

. Ryu

onna M

Judge D

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Dated: June 16, 2011

D
DENIE

A

S
UNIT
ED

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RT

For the Northern District of California

IT IS SO ORDERED.

S DISTRICT
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C
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O

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reasons, Plaintiff’s request for expedited discovery is denied.

NO

United States District Court

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RN
DONNA M. RYU T OF C
D IS T IC
R
United States Magistrate Judge

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