AF Holdings LLC v. John Doe

Filing 5

ORDER granting 4 Motion for discovery; finding as moot 4 Motion for Leave to File. See written order. Entered by Magistrate Judge John A. Gorman on 11/26/12. (WW, ilcd)

E-FILED

Monday, 26 November, 2012 03:31:31 PM
Clerk, U.S. District Court, ILCD
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF ILLINOIS

AF Holdings LLC,
Plaintiff
v.
John Doe
Defendant

)
)
)
)
)
)
)

Case No. 12-1398

ORDER
Plaintiff AF Holdings LLC moves ex parte for an Order granting it limited discovery before a
Rule 26(f) Conference. As stated herein, the Motion (#4) is GRANTED.
I. INTRODUCTION
The complaint in this matter sets out a copyright infringement based on the John Doe’s use of
the Internet and the BitTorrent protocol to commit that infringement. John Doe has an Internet Protocol
(IP) number, assigned by his or her respective Internet Service Provider (ISP). The ISP maintains
internal logs recording the date, time and customer identify for each IP address assignment made by
the ISP. Using special software, Plaintiff alleges that it was able to identify the IP number of the alleged
infringer. The details of the technology involved and its use in this case are stated in an affidavit
attached to the motion.
The only way Plaintiff has to actually identify John Doe - so that service of process may be had
and the case may truly commence - is to obtain that information from the Internet Service Providers
(ISP). Plaintiff asks for leave to serve Rule 45 subpoenas on John Doe’s ISP and any related
intermediary ISPs, demanding the true name, address, telephone number, email address, and Media
Access Control (MAC) address 1of the John Doe to whom the ISP issued the pertinent IP address.

1

This address identifies the hardware connected to a network.

II. DISCUSSION
The Federal Rules of Civil Procedure permit a party to obtain discovery “regarding any
nonprivileged matter that is relevant to any party's claim or defense,” which matter expressly includes
“the identity and location of persons who know of any discoverable matter.” FRCP 26(b)(1). The scope
of discovery under Rule 26 permits a party to obtain “discoverable matter” relevant to its claims,
irrespective of the location of such evidence. See discussion in AF Holdings LLC v Does 1-1, 058, 2012
WL 3204917 (DDC 2012).
This Rule also gives the district courts broad discretion in matters relating to discovery. Semien
v Life Insurance Company of North America, 436 F3d 805, 813 (7th Cir 2006); Nieman v Grange
Mutual Insurance Co, 2012 WL 5029875 (CD Ill), citing Brown–Bey v United States, 720 F2d 467,
470–471 (7th Cir 1983); Eggleston v Chicago Journeymen Plumbers' Local Union 130, 657 F2d 890,
902 (7th Cir1981); Indianapolis Colts v Mayor and City Council of Baltimore, 775 F2d 177, 183 (7th
Cir1985).
Federal Rule of Civil Procedure 26(d) explains that parties may generally serve discovery only
after a Rule 26(f) conference, “except ... when authorized by ... court order.” FRCP26(d)(1). To
determine whether to authorize expedited discovery in a particular case, courts generally apply a “good
cause” standard. FRCP 26(b)(“for good cause, the court may order discovery of any matter relevant to
the subject matter involved in the action.”) See also, for example, Malibu Media, LLC v John Does 123, 2012 WL 1144822 (D Colo 2012); Arista Records LLC v Does 1-19, 551 FSupp2d 1 (DDC 2008);
Interscope Records v Does 1–14, 2007 WL 2900210, *1 (D Kan); Warner Bros. Records, Inc. v Does
1–14, 2007 WL 1960602, *1 (D Utah ); LaFace Records LLC v Does 1-5, 2007 WL 2867351, *1 (WD
Mich); OpenMind Solutions, Inc. v Does 1-39, 2011 WL 4715200 (ND Cal 2011).
I find that good cause exists to permit Plaintiff to conduct pre-conference discovery to ascertain
the identities of the Doe Defendant. Because of the very nature of internet infringement, it is often the

case that a plaintiff cannot identify an infringer in any way other than by IP number. Given the
substantial federal policy underlying copyright law, it would be a travesty to let technology overtake
the legal protection of that policy.
Efforts to learn the identity of potential infringers would meet that “good cause” standard, at
least if the complaint appears to state a prima facie claim of copyright infringement. Basic copyright
principles are clear. The owner of a copyright has the exclusive right to reproduce and distribute copies
of a copyrighted work. See 17 USC § 106. To establish infringement of copyright, “two elements must
be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that
are original.” Feist Publications, Inc v Rural Telephone Service Co, 499 US 340, 361 (1991). It is also
well established that “one who, with knowledge of the infringing activity, induces, causes or materially
contributes to the infringing conduct of another, may be held liable as a ‘contributory’ infringer,”
Gershwin Publishing Corp v Columbia Artists Management, Inc, 443 F2d 1159, 1162 (2d Cir 1971)
(“Gershwin ”). See, for example, Metro–Goldwyn–Mayer Studios Inc v Grokster, Ltd, 545 US 913, 930
(2005).
The complaint in this case alleges that Plaintiff is the exclusive holder of the copyright to the
video in question; that using forensic software it was able to identify John Doe’s IP address as
99.46.242.157; that using that address, John Doe intentionally participated in a swarm the purpose of
which was to reproduce and distribute the video to third parties without the permission of the Plaintiff.
The complaint satisfies the requirement that it state a prima facie claim of copyright infringement.
Moreover, as noted under nearly identical circumstances by the Court in Arista Records, good
cause for expedited discovery exists because the “[d]efendants must be identified before this suit can
progress further.” 551 F Supp 2d at 6. John Doe is alleged to have engaged in anonymous online
behavior, which will remain anonymous unless Plaintiff is able to ascertain his/her identity. Thus,
Plaintiff’s belief that there are no practical methods to discover John Doe’s identity without court-

ordered discovery is reasonable.
Finally, the discovery sought by Plaintiff is narrow and focused. Plaintiff has specifically
identified the ISP from which this focused discovery is sought, and has explained the likelihood that
the ISP will be able to identify John Doe with specificity, which will allow him/her to be served with
process and participate in this litigation.
III. CONCLUSION
Plaintiff’s motion [#4] is therefore GRANTED, and Plaintiff is permitted to conduct expedited
discovery, pursuant to Fed.R.Civ.P. 45, for the limited purpose of discovering the identities of the John
Doe Defendant, as follows:

1.
2.

3.
5.

Plaintiff has established that “good cause” exists for it to service third party subpoenas
on the Internet Service Providers listed on Exhibit A to the Motion (the “ISPs”).
Plaintiff may serve the ISP with a Rule 45 subpoena commanding it to provide Plaintiff
with the true name, address, telephone number, e-mail address and Media Access
Control (“MAC”) address of the Defendant to whom the ISP assigned the IP Address
99.46.242.157 . Plaintiff shall attached to the subpoena a copy of this Order.
The ISP shall comply with 57 U.S.C. § 551(c)(2)(B) by notifying the subscriber
identified of this Order.
Plaintiff may only use the information disclosed in response to a Rule 45 subpoena
served on an ISP for the purpose of protecting and enforcing Plaintiff’s rights as set
forth in its Complaint.

ENTER this 26th day of November, 2012.
s/ John A. Gorman
JOHN A. GORMAN
UNITED STATES MAGISTRATE JUDGE

4