Malibu Media, LLC v. John Does 1 through 11

Filing 11

ORDER granting in part and denying in part plaintiff's 6 Motion for Leave to Serve Third Party Subpoena Prior to a Rule 26(f) Conference. Signed by Magistrate Judge David H. Bartick on 9/21/12. (kaj)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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MALIBU MEDIA, LLC,

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Plaintiff,

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Civil No.

v.
JOHN DOES 1 through 11,

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Defendants.

12-cv-1357-LAB (DHB)

ORDER GRANTING IN PART AND
DENYING IN PART PLAINTIFF’S
MOTION FOR LEAVE TO SERVE
THIRD PARTY SUBPOENA PRIOR TO
A RULE 26(f) CONFERENCE
[ECF No. 6]

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On July 2, 2012, Plaintiff Malibu Media, LLC filed a Motion for Leave to Serve Third Party

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Subpoena Prior to a Rule 26(f) Conference (“Motion”). (ECF No. 6.) Because no Defendant has been

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named or served, no opposition or reply briefs have been filed. The Court finds this Motion suitable

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for determination on the papers and without oral argument in accordance with Civil Local Rule

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7.1(d)(1). For the reasons discussed below, Plaintiff’s Motion is GRANTED IN PART and DENIED

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IN PART.

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I. PROCEDURAL HISTORY

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On June 5, 2012, Plaintiff filed a Complaint against John Does 1 through 11 (“Defendants”).

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(Compl., ECF No. 1.) Plaintiff asserts it is the registered owner of the copyright for fifteen adult

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entertainment movies. (Compl. at ¶¶ 2, 12; ECF No. 1-2.) Plaintiff alleges a claim for copyright

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infringement, stating that Defendants reproduced and distributed Plaintiff’s copyrighted works through

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the Internet without Plaintiff’s authorization. (Compl. at ¶¶ 47-53.) Plaintiff also pleads contributory

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copyright infringement, alleging that Defendants illegally obtained the copyrighted works and assisted

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others in doing the same. (Compl. at ¶¶ 54-63.)

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On July 2, 2012, Plaintiff filed the instant Motion in which Plaintiff seeks leave to take early

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discovery to learn the identities of the Doe Defendants from their respective Internet Service Providers

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(“ISPs”). Specifically, Plaintiff seeks an order permitting it to serve Rule 45 subpoenas on the third

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party ISPs and any related intermediary ISPs demanding the true name, address, telephone number, e-

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mail address and Media Access Control (“MAC”) address of the Defendant to whom the ISP issued an

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Internet Protocol (“IP”) address. (ECF No. 6-1 at 2:18-21.)1 Plaintiff attached to its Motion a list of the

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IP addresses associated with the subscribers it hopes to identify as Defendants. (See ECF No. 6-2, Decl.

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Tobias Feiser (“Feiser Decl.”), Ex. B.)

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II. FACTUAL ALLEGATIONS

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In the Complaint, Plaintiff alleges that the fifteen Doe Defendants collectively infringed its

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copyrighted works using a BitTorrent file transfer protocol. (Compl. at ¶¶ 17-44.) The Defendants are

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purportedly a collection of “BitTorrent users” or “peers” whose computers are connected for the purpose

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of sharing a file, otherwise known as a “swarm.” (Compl. at ¶ 18 (“The BitTorrent protocol’s popularity

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stems from its ability to distribute a large file without creating a heavy load on the source computer and

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network. In short, to reduce the load on the source computer, rather than downloading a file from a

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single source computer (one computer directly connected to another), the BitTorrent protocol allows

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users to join a ‘swarm’ of host computers to download and upload from each other simultaneously (one

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computer connected to numerous computers).”).)

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Plaintiff alleges that following Defendants’ unlawful infringement of its copyrighted works using

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the BitTorrent protocol and file-sharing “swarm,” Plaintiff retained IPP, Limited (“IPP”), a computer

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forensic investigation firm, to identify the IP addresses being used to participate in the infringement.

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(Compl. at ¶ 38.) Plaintiff further alleges that IPP utilized computer forensic software to determine that

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each Defendant copied a portion of Plaintiff’s copyrighted works during the same series of transactions

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and that Defendants were identified by their IP addresses. (Compl. at ¶¶ 39-44.)

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Page numbers for docketed materials cited in this Order refer to those imprinted by the Court’s
electronic filing system.
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III. LEGAL STANDARDS

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Generally, discovery is not permitted without a court order before the parties have conferred

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pursuant to Federal Rule of Civil Procedure 26(f). Fed. R. Civ. P. 26(d)(1). “[H]owever, in rare cases,

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courts have made exceptions, permitting limited discovery to ensue after filing of the complaint to

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permit the plaintiff to learn the identifying facts necessary to permit service on the defendant.”

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Columbia Ins. Co. v. Seescandy.com, 185 F.R.D. 573, 577 (N.D. Cal. 1999) (citing Gillespie v. Civiletti,

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629 F.2d 637, 642 (9th Cir. 1980)). Requests for early or expedited discovery are granted upon a

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showing by the moving party of good cause. See Semitool, Inc. v. Tokyo Electron Am., Inc., 208 F.R.D.

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273, 275-76 (N.D. Cal. 2002) (applying “the conventional standard of good cause in evaluating

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Plaintiff’s request for expedited discovery”).

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“The Ninth Circuit has held that when the defendants’ identities are unknown at the time the

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complaint is filed, courts may grant plaintiffs leave to take early discovery to determine the defendants’

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identities ‘unless it is clear that discovery would not uncover the identities, or that the complaint would

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be dismissed on other grounds.’” 808 Holdings, LLC v. Collective of December 29, 2011 Sharing Hash,

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No. 12-cv-0186 MMA (RBB), 2012 U.S. Dist. LEXIS 62980, *7 (S.D. Cal. May 4, 2012) (quoting

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Gillespie, 629 F.2d at 642). “A district court’s decision to grant discovery to determine jurisdictional

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facts is a matter of discretion.” Columbia Ins., 185 F.R.D. at 578 (citing Wells Fargo & Co. v. Wells

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Fargo Express Co., 556 F.2d 406, 430 n.24 (9th Cir. 1977)).

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District courts apply a three-factor test when considering motions for early discovery to identify

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certain defendants. Id. at 578-80. First, “the plaintiff should identify the missing party with sufficient

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specificity such that the Court can determine that defendant is a real person or entity who could be sued

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in federal court.” Id. at 578. Second, the plaintiff “should identify all previous steps taken to locate the

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elusive defendant” to ensure that the plaintiff has made a good faith effort to identify and serve process

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on the defendant. Id. at 579. Third, the “plaintiff should establish to the Court’s satisfaction that

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plaintiff’s suit against defendant could withstand a motion to dismiss.” Id. (citing Gillespie, 629 F.2d

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at 642). “[T]o prevent abuse of this extraordinary application of the discovery process and to ensure

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that the plaintiff has standing to pursue an action against defendant,” plaintiff must show that some act

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giving rise to liability actually occurred and that the discovery is aimed at identifying the person who
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allegedly committed the act. Id. at 579-80 (citing Plant v. Various John Does, 19 F. Supp. 2d 1316,

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1321 n.2 (S.D. Fla. 1998)).

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IV. ANALYSIS

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Plaintiff seeks an order permitting it to subpoena four ISPs for documents and information

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sufficient to identify the subscribers of the assigned IP addresses listed in Exhibit B to declaration of

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Tobias Feiser filed in support of Plaintiff’s Motion: (1) Cox Communications; (2) Earthlink; (3) Road

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Runner; and (4) SBC Internet Services. (Feiser Decl., Ex. B.)

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A.

Identification of Missing Parties with Sufficient Specificity

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First, Plaintiff must identify the Doe Defendants with enough specificity to enable the Court to

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determine that the defendant is a real person or entity who would be subject to the jurisdiction of this

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Court. Columbia Ins., 185 F.R.D. at 578. This court has “determined that a plaintiff identifies Doe

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defendants with sufficient specificity by providing the unique IP addresses assigned to an individual

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defendant on the day of the allegedly infringing conduct, and by using ‘geolocation technology’ to trace

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the IP addresses to a physical point of origin.” 808 Holdings, 2012 U.S. Dist. LEXIS 62980, at *10

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(quoting OpenMind Solutions, Inc. v. Does 1-39, No. C-11-3311 MEJ, 2011 U.S. Dist. LEXIS 116552,

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at *5-6 (N.D. Cal. Oct. 7, 2011); Pink Lotus Entm’t, LLC v. Does 1-46, No. C-11-02263 HRL, 2011 U.S.

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Dist. LEXIS 65614, at *6-7 (N.D. Cal. June 21, 2011)).

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Here, Plaintiff submitted a chart listing the unique IP address corresponding to each Defendant

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on the dates and times of the purportedly infringing activity, as well as the city and state in which each

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IP address is located. (Feiser Decl., Ex. B.) Consequently, Plaintiff has identified the Doe Defendants

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with sufficient specificity. See OpenMind Solutions, 2011 U.S. Dist. LEXIS 116552, at *6 (concluding

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that plaintiff satisfied the first factor by identifying the defendants’ IP addresses and by tracing the IP

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addresses to a point of origin within the State of California); Pink Lotus Entm’t, 2011 U.S. Dist. LEXIS

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65614, at *6 (same). In addition, Plaintiff has presented evidence that the identified the IP addresses

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are physically located in this district. (Feiser Decl., Ex. B.)

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B.

Previous Attempts to Locate Defendants

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Next, Plaintiff must describe all prior steps it has taken to identify the Doe Defendants in a good

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faith effort to locate and serve them. See Columbia Ins., 185 F.R.D. at 579. In its Motion, Plaintiff
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describes the efforts it made to learn the IP addresses of each Doe Defendant. (Feiser Decl., at ¶¶ 13-

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21.) However, Plaintiff generally maintains that there are no other practical measures available to

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determine the actual identities of the Doe Defendants. (ECF No. 6-1 at 4:8-18.) Indeed, Plaintiff asserts

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that the second factor is satisfied because “there is no other way for Plaintiff to obtain Defendants’

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identities, except by serving a subpoena on Defendants’ ISPs demanding it.” (Id. at 4:16-17.)

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Thus, Plaintiff appears to have obtained and investigated the available data pertaining to the

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alleged infringements in a good faith effort to locate each Doe Defendant. See Digital Sin, Inc. v. Does

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1-5698, No. C 11-04397 LB, 2011 U.S. Dist. LEXIS 128033, at *4-5 (N.D. Cal. Nov. 4, 2011);

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OpenMind Solutions, 2011 U.S. Dist. LEXIS 116552, at *5-6; MCGIP, LLC v. Does 1-149, 2011 U.S.

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Dist. LEXIS 85363, at *4-5 (N.D. Cal. Aug. 3, 2011); Pink Lotus Entm’t, 2011 U.S. Dist. LEXIS 65614,

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at *6-7.

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C.

Ability to Withstand a Motion to Dismiss

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“Finally, to be entitled to early discovery, [Plaintiff] must demonstrate that its Complaint can

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withstand a motion to dismiss.” 808 Holdings, 2012 U.S. Dist. LEXIS 62980, at *13 (citing Columbia

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Ins., 185 F.R.D. at 579).

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In order to establish copyright infringement, a plaintiff must show: (1) ownership of a valid

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copyright, and (2) that the defendant violated the copyright owner’s exclusive rights under the Copyright

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Act. Ellison v. Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004); 17 U.S.C. § 501(a). Here, Plaintiff

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alleges it owns the registered copyright of the motion pictures that Defendants copied using the

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BitTorrent protocol and BitTorrent Client. (Compl. at ¶¶ 48-49.) Plaintiff also alleges it did not

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authorize, permit, or consent to Defendants’ copying of its works. (Compl. at ¶ 50.) It appears Plaintiff

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has stated a prima facie claim for copyright infringement that can withstand a motion to dismiss.

Ability to State a Claim Upon Which Relief Can Be Granted

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2.

Personal Jurisdiction

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The plaintiff bears the burden of establishing jurisdictional facts. See Columbia Ins. Co., 185

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F.R.D. at 578. Plaintiff’s Motion does not discuss whether this Court has personal jurisdiction over the

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Doe Defendants. However, Plaintiff’s Complaint indicates that all of the potential fifteen Doe

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Defendants are located in this judicial district. (See Compl., Ex. A (showing that each IP address is
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located in San Diego County). The Complaint also alleges that each of Defendants’ acts of copyright

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infringement occurred using an IP address traced to a physical location in this district, that each

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Defendant resides in California, and/or each Defendant “has engaged in continuous and systematic

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business activity” in California. (Compl. at ¶ 5.) Therefore, at this early juncture, it appears Plaintiff

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has alleged sufficient facts to show it can likely withstand a motion to dismiss for lack of personal

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jurisdiction because all of the Doe Defendants have an IP address that was traced to a location in this

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district. See 808 Holdings, 2012 U.S. Dist. LEXIS 62980, at *11.

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2.

Venue

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“The venue of suits for infringement of copyright is not determined by the general provision

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governing suits in the federal district courts, rather by the venue provision of the Copyright Act.”

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Goldberg v. Cameron, 482 F. Supp. 2d 1136, 1143 (N.D. Cal. 2007) (citing 28 U.S.C. § 1400(a);

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Lumiere v. Mae Edna Wilder, Inc., 261 U.S. 174, 176 (1923)). ) “In copyright infringement actions,

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venue is proper ‘in the district in which the defendant or his agent resides or may be found.’” Brayton

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Purcell LLP v. Recordon & Recordon, 606 F.3d 1124, 1128 (9th Cir. 2010) (quoting 28 U.S.C. §

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1400(a)). “The Ninth Circuit interprets this statutory provision to allow venue ‘in any judicial district

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in which the defendant would be amendable to personal jurisdiction if the district were a separate

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state.’” Id. (quoting Columbia Pictures Television v. Krypton Broad. of Birmingham, Inc., 106 F.3d

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284, 289 (9th Cir. 1994)).

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Plaintiff does not address venue in the Motion. In the Complaint, however, Plaintiff alleges

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venue is proper because although the true identities of the Doe Defendants are unknown, each Defendant

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may be found in this district, and a substantial part of the infringing acts complained of occurred in this

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district. (Compl. at ¶ 6.) All fifteen Defendants appear to have IP addresses in this district.

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Accordingly, Plaintiff’s Complaint can likely survive a motion to dismiss.

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D.

Cable Privacy Act

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Finally, the Court must consider the requirements of the Cable Privacy Act, 47 U.S.C. § 551.

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The Act generally prohibits cable operators from disclosing personally identifiable information

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regarding subscribers without the prior written or electronic consent of the subscriber. 47 U.S.C. §

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551(c)(1). A cable operator, however, may disclose such information if the disclosure is made pursuant
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to a court order and the cable operator provides the subscriber with notice of the order. 47 U.S.C. §

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551(c)(2)(B). The ISPs that Plaintiff intends to subpoena in this case are cable operators within the

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meaning of the Act.

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V. CONCLUSION

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For the reasons set forth above, Plaintiff’s Motion for Leave to Serve Third Party Subpoena Prior
to a Rule 26(f) Conference is GRANTED.

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Plaintiff may serve subpoenas on the ISPs for the fifteen Doe Defendants, seeking the true name

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and address of those individuals with the IP addresses located in this judicial district as set forth on

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Exhibit A to Plaintiff’s Complaint. That information (i.e, the subscriber’s true name and address) should

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be sufficient for Plaintiff to be able to identify and serve the Doe Defendants. The Court finds it is not

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necessary for the ISPs to release Defendants’ telephone numbers, e-mail addresses or MAC addresses.

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Thus, Plaintiff’s request to seek early discovery regarding Defendants’ telephone numbers, e-mail

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addresses and MAC addresses is DENIED.

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Each subpoena must provide a minimum of forty-five days’ notice before any production and

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shall be limited to one category of documents identifying the particular subscriber or subscribers on the

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“Hit Date (UTC)” listed on Exhibit A to Plaintiff’s Complaint. (ECF No. 1-1.) The requested

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information should be limited to the name and address of each subscriber. Any subpoenaed third party

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may seek a protective order if it determines there is a legitimate basis for doing so.

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The ISPs shall have fourteen calendar days after service of the subpoenas to notify the

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subscribers that their identity has been subpoenaed by Plaintiff. Each subscriber whose identity has

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been subpoenaed shall then have thirty calendar days from the date of the notice to seek a protective

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order or file any other responsive pleading.

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Plaintiff shall serve a copy of this Order with any subpoena obtained and served pursuant to this

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Order to the named ISPs. The ISPs, in turn, must provide a copy of this Order along with the required

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notice to any subscriber whose identity is sought pursuant to this Order.

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No depositions or written discovery to Defendants are authorized at this time.

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IT IS SO ORDERED.

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DATED: September 21, 2012

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DAVID H. BARTICK
United States Magistrate Judge

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