Strike 3 Holdings, LLC v. John Doe

Filing 5

ORDER Granting #4 Plaintiff's Ex Parte Motion For Leave to Serve a Third-Party Subpoena Prior to a Rule 26(f) Conference. Signed by Magistrate Judge Allison H. Goddard on 11/18/2021. (hmw)

1
2
3
4
5
6
7
8

UNITED STATES DISTRICT COURT

9

SOUTHERN DISTRICT OF CALIFORNIA

10
11

STRIKE 3 HOLDINGS, LLC,

Case No.: 3:21-cv-01895-BAS-AHG
Plaintiff,

12
13

v.

14

ORDER GRANTING EX PARTE
APPLICATION FOR LEAVE TO
SERVE A THIRD-PARTY
SUBPOENA PRIOR TO A RULE
26(f) CONFERENCE

JOHN DOE subscriber assigned IP
address 104.2.85.73,

15

Defendant.

16

[ECF No. 4]

17
18
19

Before the Court is Plaintiff Strike 3 Holdings, LLC’s (“Plaintiff”) Ex Parte

20

Application for Leave to Serve a Third Party Subpoena Prior to a Rule 26(f) Conference.

21

ECF No. 4. No defendant has been named or served, and so no opposition or reply briefs

22

have been filed. For the reasons discussed below, the Court GRANTS Plaintiff’s ex parte

23

application.

24

I.

BACKGROUND

25

On November 8, 2021, Plaintiff filed a Complaint against Defendant “John Doe,”

26

who is allegedly a subscriber of AT&T U-verse and assigned Internet Protocol (“IP”)

27

address 104.2.85.73. ECF No. 1 at ¶ 5. Plaintiff Strike 3 Holdings, LLC, is the owner of

28

numerous adult motion pictures, which Plaintiff distributes through adult websites and
1
3:21-cv-01895-BAS-AHG

1

DVDs. Id. at ¶¶ 2–3. Plaintiff asserts that Defendant is committing “rampant and wholesale

2

copyright infringement” by downloading, recording, and distributing copies of Plaintiff’s

3

copyrighted motion pictures without authorization through the use of the BitTorrent file

4

distribution network. Id. at ¶¶ 4, 18–30.

5

In the instant motion, Plaintiff seeks leave to conduct early discovery prior to the

6

mandated Rule 26(f) conference to learn Defendant’s identity. ECF No. 4. Specifically,

7

Plaintiff seeks an order permitting it to serve a third-party subpoena under Federal Rule of

8

Civil Procedure 45 on AT&T U-verse, the Internet Service Provider (“ISP”) who leased

9

the IP address belonging to Defendant John Doe, which would require AT&T U-verse to

10

supply the name and address of its subscriber to Plaintiff. ECF No. 4-1 at 7–8. Through

11

service of the third-party subpoena, Plaintiff seeks only “the true name and address of

12

Defendant.” Id. at 8. Additionally, Plaintiff represents to the Court that it will only use this

13

information to prosecute the claims made in its Complaint. Id.

14

II.

15

A party is generally not permitted to obtain discovery without a court order before

16

the parties have conferred pursuant to Federal Rule of Civil Procedure 26(f). FED. R. CIV.

17

P. 26(d)(1). However, courts make exceptions to allow limited discovery after a complaint

18

is filed to permit the plaintiff to learn the identifying information necessary to serve the

19

defendant. Columbia Ins. Co. v. Seescandy.com, 185 F.R.D. 573, 577 (N.D. Cal. 1999);

20

see, e.g., UMG Recordings, Inc. v. Doe, No. C-08-3999-RMW, 2008 WL 4104207, at *2

21

(N.D. Cal. Aug. 29, 2008) (noting, in an infringement case, that “a plaintiff cannot have a

22

discovery planning conference with an anonymous defendant[,]” thus, limited expedited

23

discovery would “permit the [plaintiff] to identify John Doe and serve the defendant,

24

permitting this case to go forward.”)

LEGAL STANDARD

25

Consistent with this generally recognized exception to Rule 26(f), the Ninth Circuit

26

has held that “‘where the identity of the alleged defendant[] [is] not [] known prior to the

27

filing of a complaint[,] the plaintiff should be given an opportunity through discovery to

28

identify the unknown defendants, unless it is clear that discovery would not uncover the
2
3:21-cv-01895-BAS-AHG

1

identities, or that the complaint would be dismissed on other grounds.’” Wakefield v.

2

Thompson, 177 F.3d 1160, 1163 (9th Cir. 1999) (quoting Gillespie v. Civiletti, 629 F.2d

3

637, 642 (9th Cir. 1980)).

4

A party who requests early or expedited discovery must make a showing of good

5

cause. See Semitool, Inc. v. Tokyo Electron Am., Inc., 208 F.R.D. 273, 275–76 (N.D. Cal.

6

2002) (applying “the conventional standard of good cause in evaluating Plaintiff’s request

7

for expedited discovery”). Good cause is established through a balancing test “where the

8

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

9

the prejudice to the responding party.” Id. at 276. To determine whether “good cause”

10

exists to permit expedited discovery to identify John Doe defendants, district courts in the

11

Ninth Circuit consider whether the plaintiff (1) “identif[ies] the missing party with

12

sufficient specificity such that the Court can determine that the defendant is a real person

13

or entity who could be sued in federal court”; (2) “identif[ies] all previous steps taken to

14

locate the elusive defendant” to ensure that plaintiff has made a good faith effort to identify

15

the defendant; and (3) “establish[es] to the Court’s satisfaction that plaintiff’s suit against

16

defendant could withstand a motion to dismiss.” Columbia Ins., 185 F.R.D. at 578–80.

17

Additionally, the plaintiff should demonstrate the discovery will likely lead to identifying

18

information that will permit service of process. Id. at 580. These factors are considered to

19

ensure the expedited discovery procedure “will only be employed in cases where the

20

plaintiff has in good faith exhausted traditional avenues for identifying a civil defendant

21

pre-service, and will prevent use of this method to harass or intimidate.” Id.

22

III.

23

Plaintiff contends that there is good cause for this Court to allow expedited

24

DISCUSSION

discovery. ECF No. 4-1 at 11–18. For the reasons stated below, the Court agrees.

25

a. Identification of Missing Party with Sufficient Specificity

26

To satisfy the first prong, Plaintiff must identify Defendant with enough specificity

27

to enable the Court to determine that Defendant is a real person or entity who would be

28

subject to the jurisdiction of this Court. Columbia Ins., 185 F.R.D. at 578. District courts
3
3:21-cv-01895-BAS-AHG

1

in this circuit have determined “a plaintiff identifies Doe defendants with sufficient

2

specificity by providing the unique IP addresses assigned to an individual defendant on the

3

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

4

IP addresses to a physical point of origin.” 808 Holdings, LLC v. Collective of December

5

29, 2011 Sharing Hash, No. 12cv186 MMA-RBB, 2012 WL 12884688, at *4 (S.D. Cal.

6

May 4, 2012); see Openmind Solutions, Inc. v. Does 1-39, No. C-11-3311-MEJ, 2011 WL

7

4715200, at *2 (N.D. Cal. Oct. 7, 2011) (concluding that plaintiff satisfied the first factor

8

by identifying the defendants’ IP addresses and by tracing the IP addresses to a point of

9

origin within the State of California); Pink Lotus Entm’t, LLC v. Does 1-46, No. C-11-

10

02263, 2011 WL 2470986, at *3 (N.D. Cal. June 21, 2011) (same). Other courts have

11

concluded that merely identifying the IP addresses on the day of the alleged infringement

12

satisfies this factor. 808 Holdings, 2012 WL 12884688, at *4 (collecting cases).

13

Here, Plaintiff has identified the Doe Defendant with sufficient specificity. First, in

14

support of the present motion, Plaintiff provided a Declaration by David Williamson, an

15

independent contractor hired by Plaintiff as an Information Systems and Management

16

Consultant ECF No. 4-2 at 2–15 (“Ex. A”). In that role, Mr. Williamson testifies he

17

“oversaw the design, development, and overall creation of the infringement detection

18

system called VXN Scan[,] which [Plaintiff] both owns and uses to identify the IP

19

addresses used by individuals infringing Plaintiff’s movies via the BitTorrent protocol.”

20

Ex. A at ¶ 40. Mr. Williamson’s Declaration explains the VXN Scan system in detail, which

21

involves, in part, the development of a proprietary BitTorrent client that emulates the

22

behavior of a standard BitTorrent client by repeatedly downloading data pieces from peers

23

within the BitTorrent network that are distributing Plaintiff’s movies. Id. at ¶¶ 52–55.

24

Mr. Williamson testifies that another component of the VXN Scan system is the PCAP 1

25

Recorder / Capture Card, which is able to record the IP addresses connecting to the

26
27
28

1

PCAP stands for “Packet Capture.” Ex. A at ¶ 58.
4
3:21-cv-01895-BAS-AHG

1

Proprietary Client and sending the infringed copies of Plaintiff’s movies to the Proprietary

2

Client through the BitTorrent network. Id. at ¶¶ 57–59. Not only does a PCAP contain the

3

IP addresses used in the network transaction, it also records the port number and BitTorrent

4

client used to accomplish each transaction, and the “Info Hash” associated with the

5

infringing computer file, which reflects the metadata of the particular underlying .torrent

6

file being shared without authorization. Id. at ¶¶ 61–62. The PCAP Capture Card records

7

PCAPs in real time and is able to record perfect copies of every network packet received

8

by the Proprietary Client. Id. at ¶ 65. Although this Order touches only on two of the

9

components of the VXN Scan system, Mr. Williamson’s 81-paragraph Declaration sets

10

forth additional in-depth details of all five components of the system, providing the Court

11

a thorough understanding of how the system reliably pinpoints the IP addresses used by

12

individuals infringing Plaintiff’s movies and verifies the infringement.

13

Second, Plaintiff also provided a declaration by Patrick Paige, a computer forensics

14

expert retained by Plaintiff to analyze and retain forensic evidence captured by the VXN

15

Scan system. ECF No. 4-2 at 17–22 (“Ex. B”). Mr. Paige explains that VXN Scan recorded

16

numerous BitTorrent computer transactions with IP address 104.2.85.73 in the form of

17

PCAPs, and that he reviewed the PCAP to confirm that it evidences a recorded transaction

18

with that IP address on October 12, 2021 at 01:31:19 UTC involving the IP address

19

uploading a piece or pieces of a file corresponding to the hash value that is unique to one

20

of Plaintiff’s movies. Ex. B. at ¶¶ 13–19, 26.

21

Third, Plaintiff provided a declaration by Susan Stalzer, one of Plaintiff’s employees

22

who verified that each digital file that the Proprietary Client received through its

23

transactions with IP address 104.2.85.73 is a copy of one of Plaintiff’s copyrighted works,

24

by viewing the unauthorized motion pictures corresponding with the file hashes side-by-

25

side with Plaintiff’s original movies. ECF No. 4-2 at 24–26 (“Ex. C”); see also ECF No.

26

1-2 (Exhibit A to the Complaint, listing the hash values of the 70 torrent files received by

27

the Proprietary Client from the IP address 104.2.85.73). Mr. Paige testified that based on

28

his experience in similar cases, Defendant’s ISP, AT&T U-Verse, is the only entity that
5
3:21-cv-01895-BAS-AHG

1

can correlate the IP address 104.2.85.73 to its subscriber to pinpoint Defendant’s identity.

2

Ex. B at ¶ 28.

3

Finally, Plaintiff provides a declaration by Emilie Kennedy, Plaintiff’s in-house

4

General Counsel. ECF No. 4-2 at 28–30 (“Ex. D”). Ms. Kennedy explains that after

5

Plaintiff received infringement data from VXN Scan identifying IP address 104.2.85.73 as

6

infringing its works, the IP address was automatically input into Maxmind’s Geolocation

7

Database on October 22, 2021 at 14:00:51 UTC, which traced the IP address location to

8

Rancho Santa Fe, California, within this Court’s jurisdiction. Ex. D. at ¶¶ 4–5. Plaintiff has

9

since repeated the trace through the Geolocation Database twice more, prior to filing the

10

Complaint and prior to filing the present Motion, confirming the IP address continues to

11

trace to San Diego and this District. Id. at ¶¶ 6–7. The Court is satisfied that these multiple

12

geolocation traces over the course of two months indicating that the Defendant is located

13

in this District are reliably accurate.

14

Based on all of the information above, the Court concludes Plaintiff provided a

15

sufficient showing that it seeks to sue a real person subject to the Court’s jurisdiction.

16

Likewise, if Plaintiff obtains the identifying information from the ISP for the subscriber

17

assigned the IP address at issue, the information sought in the subpoena would likely enable

18

Plaintiff to serve Defendant. Therefore, the Court finds Plaintiff satisfied the “sufficient

19

specificity” threshold.

20

b. Previous Attempts to Locate Defendant

21

Next, Plaintiff is required to describe all steps taken to identify the Doe defendant in

22

a good-faith effort to locate and serve them. Plaintiff states that it attempted to locate

23

Defendant by searching for Defendant’s IP address using online search engines and other

24

web search tools. ECF No. 4-1 at 14. Plaintiff also reviewed numerous sources of authority

25

such as legislative reports, agency websites, informational technology guides, etc.

26

regarding whether it is possible to identify such a defendant by other means, and

27

extensively discussed this issue with its computer investigators and cyber security

28

consultants. Id. Despite these diligent efforts, Plaintiff was unable to identify any means of
6
3:21-cv-01895-BAS-AHG

1

obtaining the identity of Defendant other than through subpoenaing the information from

2

the ISP. Id.; see also Ex. B at ¶ 28. Thus, the Court finds Plaintiff has shown it has made a

3

good-faith effort to identify and locate Defendant before resorting to filing the instant

4

motion.

5

c. Whether Plaintiff Can Withstand a Motion to Dismiss

6

Lastly, Plaintiff must establish it could survive a motion to dismiss. See FED. R. CIV.

7

P. 12(b); Columbia Ins., 185 F.R.D. at 579. To survive a motion to dismiss for failure to

8

state a claim upon which relief can be granted, “a complaint must contain sufficient factual

9

matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v.

10

Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570

11

(2007)). To present a prima facie case of copyright infringement, Plaintiff must show: (1)

12

ownership of a valid copyright; and (2) that Defendant violated the copyright owner’s

13

exclusive rights under the Copyright Act. Range Road Music, Inc. v. East Coast Foods,

14

Inc., 668 F.3d 1148, 1153 (9th Cir. 2012). In addition, for direct infringement Plaintiff is

15

required to show causation by Defendant. Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657,

16

666 (9th Cir. 2017).

17

Here, Plaintiff’s Complaint clearly alleges that Plaintiff owns a valid copyright in

18

the works at issue, which are registered with the United States Copyright Office. See ECF

19

No. 1 at ¶¶ 43, 46, 49.2 And again, Ms. Stalzer attests that she reviewed the files correlating

20

to the hashes identified in Exhibit A to the Complaint and confirmed that they are

21

“identical, strikingly similar or substantially similar” to Strike 3’s original copyrighted

22

Works. Ex. C at ¶¶ 7–11; ECF No. 1 at ¶¶ 34–35. Plaintiff’s Complaint also alleges

23

Defendant used BitTorrent to copy and distribute the copyrighted works without

24
25
26
27
28

2

Exhibit A to the Complaint, which shows the hash values of the purportedly infringing
movies downloaded from the IP address 104.2.85.73, also contains the United States
Copyright Office registration information of the works that correspond with those hash
files. ECF No. 1-2.
7
3:21-cv-01895-BAS-AHG

1

authorization, and that the infringement was continuous and ongoing. ECF No. 1 at ¶¶ 4,

2

19–30, 33, 33–36, 44–46. Thus, Plaintiff’s Complaint has stated a claim for copyright

3

infringement against the Doe Defendant sufficient to survive a motion to dismiss.

4

Additionally, Plaintiff has alleged sufficient facts to show it could withstand a motion to

5

dismiss for lack of personal jurisdiction or a motion for improper venue, because

6

Defendant’s IP address was traced to a location in this District. Accordingly, the Court

7

concludes Plaintiff has met the third prong necessary to establish good cause for granting

8

early discovery.

9

IV.

CONCLUSION

10

For the reasons set forth above, and for good cause shown, the Court GRANTS

11

Plaintiff’s ex parte application for leave to serve a subpoena prior to a Rule 26(f)

12

conference. ECF No. 4. However, the Court is cognizant of the potential embarrassment of

13

being identified in this type of case and “shares the growing concern about unscrupulous

14

tactics used by certain plaintiffs, especially in the adult film industry, to shake down the

15

owners of IP addresses.” Malibu Media, LLC v. Does 1-5, No. 12-Civ-2950-JPO, 2012 WL

16

2001968, at *1 (S.D.N.Y. June 1, 2012). Anticipating and sharing these concerns, Plaintiff

17

invites the Court to issue a protective order establishing procedural safeguards if the Court

18

finds such procedures appropriate. ECF No. 4-1 at 18. Accordingly, the Court ORDERS

19

as follows:

20

1. Plaintiff shall attach a copy of this Order to any subpoena.

21

2. Plaintiff may serve the ISP with a Rule 45 subpoena commanding the ISP to

22

provide Plaintiff with only the true name and address of the Defendant to

23

whom the ISP assigned an IP address as set forth on Exhibit A to the

24

Complaint. The ISP is not to release the Defendant’s telephone number or

25

email address.

26

3. Within fourteen (14) calendar days after service of the subpoena, the ISP shall

27

notify the subscriber that his or her identity has been subpoenaed by Plaintiff.

28
8
3:21-cv-01895-BAS-AHG

1

The ISP must also provide a copy of this Order along with the required notice

2

to the subscriber whose identity is sought pursuant to this Order.

3

4. The subscriber whose identity has been subpoenaed shall have thirty (30)

4

calendar days from the date of such notice to challenge the disclosure of his

5

or her name and contact information by filing an appropriate pleading with

6

this Court contesting the subpoena. A subscriber who moves to quash or

7

modify the subpoena may proceed anonymously as “John Doe,” and shall

8

remain anonymous until the Court orders that the identifying information may

9

be released.

10

5. If the ISP wishes to move to quash the subpoena, it shall do so before the

11

return date of the subpoena. The return date of the subpoena must allow for

12

at least forty-five (45) days from service to production. If a motion to quash

13

or other challenge is brought, the ISP shall preserve the information sought

14

by Plaintiff in the subpoena pending resolution of such motion or challenge.

15

6. Plaintiff may only use the information disclosed in response to a Rule 45

16

subpoena served on the ISP for the purpose of protecting and enforcing

17

Plaintiff’s rights as set forth in its Complaint. If Defendant wishes to proceed

18

anonymously, Plaintiff may not release any identifying information without a

19

court order allowing the release of the information.

20
21
22

IT IS SO ORDERED.
Dated: November 18, 2021

23
24
25
26
27
28
9
3:21-cv-01895-BAS-AHG