Bodyguard Productions, Inc. v. Doe 1 et al

Filing 9

ORDER GRANTING PLAINTIFF'S EX-PARTE MOTION FOR LEAVE TO SERVE THIRD PARTY SUBPOENA PRIOR TO A RULE 26(F) CONFERENCE re 8 - Signed by MAGISTRATE JUDGE KEVIN S.C. CHANG on 12/15/2017. (emt, )CERTIFICATE OF SER VICEParticipants registered to receive electronic notifications received this document electronically at the e-mail address listed on the Notice of Electronic Filing (NEF). Participants not registered to receive electronic notifications were served by first class mail on the date of this docket entry

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF HAWAII
BODYGUARD PRODUCTIONS, INC.,

)
)
Plaintiff,
)
)
vs.
)
)
DOES 1 THROUGH 16,
)
)
)
Defendants.
______________________________ )

CIVIL NO. 17-00590 DKW-KSC
ORDER GRANTING PLAINTIFF’S
EX-PARTE MOTION FOR LEAVE TO
SERVE THIRD PARTY SUBPOENA
PRIOR TO A RULE 26(F)
CONFERENCE

ORDER GRANTING PLAINTIFF’S EX-PARTE MOTION
FOR LEAVE TO SERVE THIRD PARTY SUBPOENA
PRIOR TO A RULE 26(F) CONFERENCE
Before the Court is Plaintiff Bodyguard Productions,
Inc.’s (“Plaintiff”) Ex-Parte Motion for Leave to Serve Third
Party Subpoena Prior to a Rule 26(f) Conference (“Motion”), filed
December 14, 2017.

The Court finds this matter suitable for

disposition without a hearing pursuant to Rule 7.2(d) of the
Local Rules of Practice for the U.S. District Court for the
District of Hawaii.

After carefully considering the Motion and

the applicable law, the Court hereby GRANTS Plaintiff’s Motion
for the reasons set forth below.
BACKGROUND
On December 13, 2017, Plaintiff commenced this
copyright infringement action.

Plaintiff alleges violations for

direct and contributory copyright infringement, pursuant to 17
U.S.C. § 101, et seq.

Plaintiff claims that it is the owner of

the copyright registration for the motion picture entitled “The

Hitman’s Bodyguard” (“the Work”).

According to Plaintiff,

Defendants used BitTorrent, peer-to-peer file sharing protocols,
to reproduce, redistribute, and perform the Work.
After conducting an investigation, Plaintiff was able
to identify Defendants’ IP addresses and the related Internet
Service Providers (“ISP”) as Hawaiian Telcom and Verizon
Wireless.
DISCUSSION
Plaintiff seeks an order authorizing it to conduct
limited early discovery for the purpose of identifying Doe
Defendants.

In particular, Plaintiff wishes to serve third-party

subpoenas on Hawaiian Telcom and Verizon Wireless.
Federal Rule of Civil Procedure (“FRCP”) 26(d)(1)
provides that “[a] party may not seek discovery from any source
before the parties have conferred as required by Rule 26(f),
except . . . when authorized . . . by court order.”1
Civ. P. 26(d)(1).

Fed. R.

In rare situations, however, “courts have made

exceptions, permitting limited discovery to ensue after filing of
the complaint to permit the plaintiff to learn the identifying
facts necessary to permit service on the defendant.”

1

Columbia

This rule applies with equal force to subpoenas served on
non-parties. Platinum Mfg. Int’l, Inc. v. UniNet Imaging, Inc.,
No. 8:08-cv-310-T-27MAP, 2008 WL 927558, at *1 n.2 (M.D. Fla.
Apr. 4, 2008) (citing Crutcher v. Fidelity Nat’l Ins. Co., 2007
WL 430655 (E.D. La. 2007)).
2

Ins. Co. V. Seescandy.com, 185 F.R.D. 573, 577 (N.D. Cal. 1999)
(citing Gillespie v. Civiletti, 629 F.2d 637, 642 (9th Cir.
1980)).

Courts permit early discovery when a plaintiff has

established good cause.

“Good cause” may be found where the

“need for expedited discovery, in consideration of the
administration of justice, outweighs the prejudice to the
responding party.”

Semitool, Inc. v. Tokyo Electron Am., Inc.,

208 F.R.D. 273, 276 (N.D. Cal. 2002).
The Ninth Circuit permits the use of discovery to
ascertain the identities of unknown defendants, “unless it is
clear that discovery would not uncover the identities, or that
the complaint would be dismissed on other grounds.”
629 F.2d at 642.

Gillespie,

A three-factor test is employed in deciding

whether to permit early discovery to identify defendants.
First, “the plaintiff should identify the missing
party with sufficient specificity such that the
Court can determine that defendant is a real
person or entity who could be sued in federal
court.” Second, the plaintiff “should identify
all previous steps taken to locate the elusive
defendant” to ensure that the plaintiff has made a
good faith effort to identify and serve process on
the defendant. Third, the “plaintiff should
establish to the Court’s satisfaction that
plaintiff's suit against defendant could withstand
a motion to dismiss.” Further “the plaintiff
should file a request for discovery with the
Court, along with a statement of reasons
justifying the specific discovery requested as
well as identification of a limited number of
persons or entities on whom discovery process
might be served and for which there is a
reasonable likelihood that the discovery process
3

will lead to identifying information about
defendant that would make service of process
possible.”
Dallas Buyers Club, LLC v. Doe–72.199.251.97, No. 15cv2033–BAS
(DHB), 2015 WL 5675540, at *2 (S.D. Cal. Sept. 25, 2015) (quoting
Columbia, 185 F.R.D. at 578-80) (internal citations omitted).
Courts have also considered whether the responding or opposing
party would suffer prejudice, whether the expedited discovery
would substantially contribute to the case moving forward, and
whether the requested information is likely to lead to
identifying information.

Patrick Collins, Inc. v. Does 1-1219,

No. C 10-14468 LB, 2010 WL 5422569, at *2 (N.D. Cal. Dec. 28,
2010); AF Holdings, LLC v. Doe, Civ. No. S-12-1078 GEB GGH, 2012
WL 1610185, at **2-3 (E.D. Cal. May 8, 2012).
Courts have found that good cause exists to permit
“expedited discovery to ascertain the identities of Doe
defendants in copyright infringement actions.”

AF Holdings, 2012

WL 1610185, at *2 (citing UMG Recordings, Inc. v. Doe., No.
C-08-03999 RMW, 2008 WL 4104207 (N.D. Cal. Sept. 4, 2008); Arista
Records LLC v. Does 1-43, Civil No. 07cv2357-LAB (POR), 2007 WL
4538697 (S.D. Cal. Dec. 20, 2007)).
A.

Identification of Missing Party with Sufficient Specificity
The Court finds that Plaintiff has identified

Defendants with enough specificity to enable the Court to
determine that Defendants are real persons or entities who would
4

be subject to the Court’s jurisdiction.

Exhibit 1 to the

Complaint lists the IP addresses of each Defendant, the date of
the alleged infringement, the name of the infringing file, and
the counties in which the IP addresses are located within the
State of Hawaii.

808 Holdings, LLC v. Collective of Dec. 29,

2011 Sharing Hash, Civil No. 12cv00186 MMA(RBB), 2012 WL 1648838,
at *4 (S.D. Cal. May 4, 2012) (“[A] plaintiff identifies Doe
defendants with sufficient specificity by providing the unique IP
addresses assigned to an individual defendant on the day of the
allegedly infringing conduct, and by using ‘geolocation
technology’ to trace the IP address to a physical point of
origin.”).

Plaintiff also identified Hawaiian Telcom and Verizon

Wireless as the ISP that provided the IP addresses associated
with Defendants.
B.

Steps Taken to Locate Defendants
Plaintiff has made good faith efforts to locate

Defendants.

It obtained IP addresses, as well as the ISP and

counties associated with those addresses.

However, this

information did not enable Plaintiff to ascertain the
subscriber’s identity or the identities of the actual Defendants.
Cobbler Nevada, LLC, v. Doe-68.7.61.76, No. 15-CV-2031-GPC(JMA),
2015 WL 5675516, at *2 (S.D. Cal. Sept. 25, 2015) (citing
Columbia, 185 F.R.D. at 579).

5

C.

Ability to Withstand a Motion to Dismiss
Plaintiff alleges that it is the copyright owner of the

Work; that Defendants copied the constituent elements of the Work
without authorization, permission, or consent; that Defendants
violated Plaintiff’s exclusive rights; that each infringement was
committed willfully; that Defendants deprived the producer, all
persons involved in the production and marketing of the film, and
owners of local theaters and retail outlets from income; and that
it suffered damages as a result.
With respect to its contributory copyright infringement
claim, Plaintiff alleges that each Defendant caused or materially
contributed to the infringing conduct of each other Defendant;
that it did not authorize Defendants’ conduct; that each
Defendant knew or should have known that the other BitTorrent
users in a swarm with it were directly infringing the Work; that
each infringement was committed willfully; that Defendants
deprived the producer, all persons involved in the production and
marketing of the film, and owners of local theaters and retail
outlets from income; and that Defendants caused it to suffer
damages.

The Court finds that for the purpose of this Motion,

Plaintiff has demonstrated that its claims could survive a motion
to dismiss.

6

D.

Expedited Discovery’s Contribution to Moving the Case
Forward
The requested early discovery here would substantially

contribute to the orderly and expeditious administration of this
case.

Without ascertaining Defendants’ identities, Plaintiff

cannot proceed with this action.

It cannot identify Defendants

in its pleadings, it cannot serve Defendants, and it cannot
conduct a Rule 26(f) conference.

AF Holdings, 2012 WL 1610185,

at *2.
E.

Prejudice to the Responding/Opposing Party
Although the need for expedited discovery must be

balanced against the prejudice to the responding party, Semitool,
208 F.R.D. at 276, the Court believes that the ISP would suffer
little to no prejudice if they are ordered to produce the
subscriber identities of a limited number of IP addresses.
Neither would Defendants suffer prejudice as a result of the
discovery.

Plaintiff’s discovery request is narrowly tailored.

It seeks only to obtain the names and addresses of the
subscribers associated with IP addresses on the dates reflected
in Exhibit 1 to the Complaint.

Plaintiff also proposes that

Defendants be notified by the ISP of the subpoena and be given an
opportunity to respond before the information is produced.

These

parameters ensure that Defendants will not be forced to unwarily
incriminate themselves or suffer undue prejudice.
7

AF Holdings,

2012 WL 1610185, at *3 (“Expedited discovery may be inappropriate
where defendants are required to unwarily incriminate themselves
before they have a chance to review the facts of the case and to
retain counsel.”) (citation omitted).
F.

Likely to Lead to Identifying Information
Finally, the Court finds that the requested discovery

is likely to lead to identifying information.

Plaintiff has

provided IP addresses for specific dates in specific counties
within the State.

Given the availability of this information,

the requested discovery should reveal Defendants’ identities.
Based on the foregoing, the Court finds that Plaintiff
has demonstrated good cause to conduct early discovery.
CONCLUSION
The Court hereby GRANTS Plaintiff’s Ex Parte Motion for
Leave to Serve Third Party Subpoena Prior to a Rule 26(f)
Conference, filed December 14, 2017, as follows:
(1) Plaintiff is allowed to serve Rule 45 subpoenas on
Hawaiian Telcom and Verizon Wireless to obtain the name and
addresses of each subscriber associated with the IP
addresses on the dates set forth in Exhibit 1 to the
Complaint.
(2) Plaintiff shall serve a copy of this Order with any
subpoenas issued pursuant to this Order.
(3) The subpoenas authorized by this Order shall be deemed
appropriate court orders under 47 U.S.C. § 551.
(4) Hawaiian Telcom and Verizon Wireless shall have 30 days
from the date of service upon them to serve the subscribers
of the IP addresses with a copy of the subpoenas and a copy
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of this Order. Hawaiian Telcom and Verizon Wireless may
serve the subscribers by any reasonable means, including
written notice sent to the subscriber’s last known address
via first class mail.
(5) The subscribers shall have 30 days from the date of
service upon them to file any motions in this court
contesting the subpoena. If that 30-day period lapses
without a subscriber contesting the subpoena, Hawaiian
Telcom and Verizon Wireless shall have 10 days to produce
the information responsive to the subpoenas to Plaintiff.
(6) After Hawaiian Telcom and Verizon Wireless are properly
served with Rule 45 subpoenas as detailed above, they shall
preserve all subpoenaed information pending the delivery of
such information to Plaintiff or the resolution of a timely
filed and granted motion to quash the subpoena with respect
to such information.
(7) Any information disclosed to Plaintiff in response to a
subpoena may be used by Plaintiff solely for the purpose of
protecting its rights under the Copyright Act, 17 U.S.C.
§ 101, et seq.
IT IS SO ORDERED.
DATED:

Honolulu, Hawaii, December 15, 2017.

_____________________________
Kevin S.C. Chang
United States Magistrate Judge

CV 17-00590 DKW-KSC; BODYGUARD PRODUCTIONS, INC. V. DOES 1 THROUGH 16;
ORDER GRANTING PLAINTIFF’S EX-PARTE MOTION FOR LEAVE TO SERVE THIRD
PARTY SUBPOENA PRIOR TO A RULE 26(F) CONFERENCE

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