reFX Audio Software Inc. et al
Filing
41
MEMORANDUM Opinion and Order Signed by the Honorable Elaine E. Bucklo on 10/28/2013. (et, )
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
reFX AUDIO SOFTWARE INC.,
)
)
)
)
)
) Case No.1:13-cv-940
)
)
)
)
)
Plaintiff,
v.
DOES 1-141,
Defendants.
MEMORANDUM OPINION AND ORDER
Plaintiff reFX Audio Software Inc. (“reFX”), a creator of
audio
software,
filed
suit
against
141
unnamed
defendants,
alleging a claim for copyright infringement under the Copyright
Act of 1976, 17 U.S.C. §§ 101 et seq., contributory copyright
infringement, and civil conspiracy seeking damages and injunctive
relief. Plaintiff claims that defendants illegally reproduced and
distributed
software
Plaintiff’s
program
by
means
copyrighted
of
ROM
interactive
synthesizer-plugin
“peer-to-peer”
transfer technology protocol called BitTorrent.
file
On February 19,
2013, Plaintiff obtained an ex parte expedited discovery order
granting its motion for leave to take discovery prior to Rule
26(f) conference.
On May 2, 2013, Plaintiff served a subpoena
duces tecum on SBC Internet Services LLC d/b/a AT&T Internet
1
Services (“AT&T”) seeking personally identifiable information of
141
internet
subscribers.
multiple grounds,
including
AT&T
objects
that
the
to
joinder
the
of
subpoena
the
141
on
Doe
defendants is not proper and that the request creates an undue
burden.
For the reasons that follow, I deny Plaintiff’s motion
to compel and sever all defendants from the case except for Doe
#1.
I.
According to Plaintiff, its product, Nexus 2, which allows
users to manipulate over 1,000 distinctive “factory” preset
sounds and music, has been unlawfully downloaded and then further
uploaded without Plaintiff’s permission by the 141 Doe
defendants.
To identify the Does, Plaintiff employed an
investigator who determined the internet protocol (“IP”)
addresses, times of upload and internet service providers (“ISP”)
for each Doe defendant.
Plaintiff claims that an ISP can use
that information to identify the account holder of the IP address
from which the illegal upload occurred.
Plaintiff argues that
without the identification information from the ISP, it would be
impossible for rights holders to protect against infringers.
Defendants’ alleged infringement occurs through the
BitTorrent system, which has been described as follows:
BitTorrent is a software protocol that facilitates
the practice of peer-to-peer file sharing used to
2
distribute large amounts of data over the internet.
To share information using BitTorrent, an initial
file-provider (“seeder”) elects to share an initial
file, called a ‘seed,’ with a torrent network. The
file to be distributed is divided into segments
called ‘pieces.’ Other users (“peers”) intentionally
connect to the seed to download it. As each peer
receives a new piece of the file, the peer also
immediately becomes a source of that piece for other
peers, relieving the original seeder from having to
send that piece to every peer requesting a copy.
This is the key difference between BitTorrent and
earlier peer-to-peer file sharing systems:
‘BitTorrent makes file sharing a cooperative
endeavor.’
Malibu Media, LLC v. John Does 1-49, No. 12-CV-6676, 2013 WL
4501443, at *1 (N.D. Ill. Aug. 22, 2013) (quoting The Case
Against Combating BitTorrent Piracy Through John Doe Copyright
Infringement Lawsuits, 111 Mich. L.Rev. 283, 290 (2012)).
Cases
involving the BitTorrent technology have proliferated through
this district in the past few years, and there currently exists a
divide among the district courts about whether the joinder of
defendants whose illegal activity occurred through the BitTorrent
technology is proper under Fed. R. Civ. P. (“Rule”) 20.
AT&T
argues that the motion should be denied under both Rule 45 and
Rule 20.
Objections Under Rule 45
Rule 45, which governs subpoena practice, provides four
grounds under which a non-party may quash a non-party may quash a
subpoena, including where a party “(i)fails to allow a reasonable
time to comply; (ii) requires a person who is neither a party nor
3
a party’s officer to travel more than 100 miles from where the
person resides, is employed, or regularly transacts business in
person . . . ; (iii) requires disclosure of privileged or other
protected matter, if no exception or waiver applies; or (iv)
subjects a person to undue burden.” Fed. R. Civ. P. 45(d)(3)(A).
AT&T has cited undue burden as a basis for objecting to the
subpoena.
Specifically, AT&T argues that the “mass Doe” cases
like this impose an undue burden on ISPs like AT&T, as well as on
the public and judiciary.
It urges that because “the underlying
action is improper, any burden on a third party to disclose the
identity of its customers is an undue burden.” Mem. Opp. Mot.
Compel. [#28] at 27.
The undue burden AT&T cites includes “not
only the legal resources associated with handling subpoenas, and
the personnel time associated with performing IP address
research, but also the personnel hours and expenses required to
notify and respond to inquiries from subscribers.” Id. at 28 n.
19.
Plaintiff urges that the burden AT&T must shoulder in
looking up IP addresses is justified to prevent defendants from
continued infringement of its valid copyrights.
It argues that
without an order compelling AT&T to produce the information
requested defendants will continue to distribute its copyrighted
material illegally and AT&T “will become a safe haven for
individuals who wish to steal others’ copyrighted works.” Plt.
Reply In Supp. [#31] at 3.
4
To be sure, the burden of satisfying a subpoena for a single
defendant is magnified when the subpoena seeks information for
141 defendants.
Enlisting legal personnel to gather the
information and contact subscribers no doubt creates a burden,
and AT&T makes a compelling case that gathering contact
information for 141 separate subscribers renders that burden
undue.
AT&T also argues that Plaintiff has not established good
cause for the discovery it seeks.
It points out that Plaintiff
has failed to establish a connection between the copyright
registrations attached to the Complaint and any particular item
of software alleged to have been infringed because Plaintiff’s
investigator’s declaration suggests only that “some unspecified
version of some unspecified item of Plaintiff’s software” was
illegally downloaded. Plaintiff failed to address this argument
in its Reply, and I find that the link between the copyrighted
material and the alleged infringement is sufficient to withstand
a good cause attack.
Plaintiff’s allegations, however, are
not sufficient to withstand the improper joinder challenge as
discussed below.
Objections Based On Improper Joinder
In the remainder of its objections, AT&T argues, as scores
of other ISP providers have in similar cases, that it should not
be compelled to produce the information because the joinder of
5
the Doe defendants is improper under Rule 20. Under Rule 20,
defendants may be joined in one action provided that “(A) any
right to relief is asserted against the jointly, severally, or
... arising out of the same transaction, occurrence, or series of
transactions or occurrences; and (B) any question of law and fact
common to all defendants will arise in the action.” Rule
20(a)(2).
AT&T argues that Plaintiff cannot show either prong of
Rule 20 since participation in a common BitTorrent does not
constitute the same transaction or series of transactions and the
questions of law and fact will differ for each defendant.
Thus,
AT&T urges this Court to follow district courts that have
dismissed all but Doe #1 from the litigation, forcing plaintiffs
to file one case per defendant and pay a filing fee for each. See
e.g., TCYK, LLC v. Doe, No. 13-cv-3828, 2013 U.S. Dist. LEXIS
88402 (N.D. Ill. Jun. 24, 2013) (Guzman, J.) (dismissing all but
one Doe defendant “without prejudice to plaintiff suing them
individually”); Malibu Media, LLC v. John Does 1-21, 2013 WL
2458290 (Reinhard, J.) (ordering that all but one Doe defendant
be severed from the action).
To support its argument, AT&T characterizes the trend in
this district as one that increasingly disallows the aggregate
defendant or “packaging defendant” suits.
It cites opinions
holding that participation in a common BitTorrent swarm is an
insufficient basis for joinder of multiple Does. See e.g.,
6
Lightspeed v. Does 1-1000, No. 10-cv-5604, 2011 WL 8179131 (N.D.
Ill. Mar. 31, 2011)(Manning, J.) (finding joinder inappropriate
in BitTorrent context); CP Prods., Inc. v. Does, No. 10-cv-6225,
2011 WL 737761 (N.D. Ill. Feb. 24, 2011) (Shadur, J.) (“It would
constitute a real stretch of the meaning of language for [the
plaintiff] to call Rule 20(a)(2)(A) into play as the asserted
predicate for lumping its separate claims into a single
lawsuit.”). AT&T argues that these decisions support its argument
that the “swarm joinder theory fails the first prong of Rule 20
because participation in a swarm does not constitute a single
transaction or occurrence, or series of transactions or
occurrences,” Mem. Opp. Mot. Comp. [#28] at 20, chiefly because
the time span in which the defendants allegedly participated in
the swarm is too long.
Here, according to the chart attached to the Declaration of
Plaintiff’s investigator, the Doe defendants participated in the
swarm that allegedly infringed Plaintiff’s copyright over a
period of eight months (October 2012 to June 2013).
Moreover,
that chart demonstrates that there is minimal overlap among the
141 defendants, which frustrates Plaintiff’s claim that
participation in a swarm amounts to a single transaction or
occurrence or series of transactions or occurrences.
Plaintiff
has not demonstrated that the 141 Doe defendants actually
exchanged data with one another. As such, a Doe defendant “who
7
entered the swarm and left days, weeks or months before” a
subsequent Doe’s arrival cannot “fairly be said to have engaged
in a transaction or series of transactions” with the laterarrived Doe defendant. Malibu Media, LLC v. Reynolds, No. 12 C
6672, 2013 WL 870618, at * 12 (N. D. Ill. Mar. 7, 2013)
(ordering, on the court’s own motion, to sever all defendants
where plaintiff failed to show that the Doe defendants “actually
exchanged pieces of [the copyrighted works] with one another,
relied on each others’ activities, or otherwise paved the way for
each others’ success in the swarm”); see also Malibu Media, LLC
v. John Does 1-21, No. 12 C 9656, 2013 WL 2458290, at *7 (N.D.
Ill. Jun. 6, 2013) (Reinhard, J.) (granting defendants’ motion to
sever because “plaintiff’s allegations that Does’ participation
in a swarm at some point over the course of over six weeks are
not sufficient to establish that they acted in concert”).
In this Circuit, there remains a split of authority on
whether plaintiffs’ claims against multiple defendants arise out
of shared operative facts when each Doe defendant participates in
a BitTorrent swarm, and both parties admit as much.
While there
are compelling arguments on both sides of this argument, the
interests of judicial economy weigh in favor of severing all but
Doe #1, allowing Plaintiff to file separate actions against the
remaining Doe defendants.
Here, Plaintiff alleges that the Doe
defendants “acted in a collective and interdependent manner via
8
the Internet in the unlawful reproduction and distribution of
Plaintiff’s copyrighted ROM synthesizer-plugin software program
by means of interactive ‘peer-to-peer’ (“P2P”) file transfer
technology protocol called BitTorrent.” Compl. [# 1] at 2.
That
“collective and interdependent action” allegedly occurred over a
period of eight months, which is too long to permit joinder in
light of BitTorrent’s primary feature: sharing material on an
instantaneous basis.
Further, Plaintiff has alleged that the
suit against each defendant will involve “law or fact common to
all defendants,” but district courts are increasingly recognizing
the logistical hurdles that could arise given that each defendant
may raise its own defense, which would result a series of minitrials for each.
This Court finds that the allegations in the complaint fail
to establish that the Doe defendants’ separate actions were part
of the same “series of transactions” as required by Rule 20.
The
allegations only demonstrate that the Doe Defendants used
BitTorrent to participate in a swarm that allowed them to
download software.
There is no further allegation that the Doe
Defendants acted in a concerted manner to accomplish the illegal
downloading.
In Reynolds, 2013 WL 870618, at *11, Judge Kendall
highlights the fundamental problem with using participation in a
BitTorrent swarm as a justification for joinder:
9
Despite its cooperative design, the BitTorrent’s
architecture alone does not compel the conclusion
that anonymous defendants who download copies of
the same file from the same swarm are engaged in a
common transaction or series of transactions for
the purpose of Rule 20(a)(2). Where a swarm
continues to exist for an extended period of time,
it is improbable that defendants entering a swarm
weeks or months apart will actually exchange pieces
of data. Furthermore, it is impossible for
defendants who are not in a swarm coextensively to
exchange any pieces of a file.
All that has been alleged here is that all 141 Defendants
committed the same type of violation using BitTorrent, which is
insufficient to link them together for the purposes of joinder.
Finally, “[i]t is well settled that the district court has
wide discretion in deciding whether to dismiss a party as a
defendant in a civil action.”
Intercon Research Assoc’s, Ltd. v.
Dresser Industries, Inc., 696 F.2d 53, 56 (7th Cir. 1982).
The
Seventh Circuit has acknowledged that this discretion permits
district courts to take factors other than those articulated in
Rule 20 into account, such as whether joinder comports with the
principles of fundamental fairness, or whether joinder prejudices
a party. Chavez v. Ill. State Police, 251 F.3d 612, 632 (7th Cir.
2001). Here, in light of the tenuous connection between the Doe
defendants’ activities and the alleged “concerted action,” it
would be fundamentally unfair to permit the joinder of all 141
Doe defendants.
10
III.
For the foregoing reasons, Plaintiff’s motion to compel is
denied, and each of the Defendants other than Doe #1 is severed
from
this
action.
The
remaining
Doe
defendants
2-141
dismissed without prejudice.
ENTER ORDER:
____________________________
Elaine E. Bucklo
United States District Judge
Dated: October 28, 2013
11
are
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