Openmind Solutions, Inc. v. Does 1-2925

Filing 15

MOTION for Reconsideration re 7 Order on Motion for Discovery BRIEF OF AMICUS CURIAE ELECTRONIC FRONTIER FOUNDATION IN SUPPORT OF RECONSIDERATION OF THE COURTS ORDER GRANTING EARLY DISCOVERY OR, IN THE ALTERNATIVE, OF QUASHING PLAINTIFFS PRE-COMPLAINT SUBPOENAS by Electronic Frontier Foundation. (Attachments: # 1 Exhibit Proposed ISP Notice, # 2 Exhibit Schoen Declaration)(Mudd, Charles)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF ILLINOIS

)
)
)
Plaintiff,
)
)
v.
)
)
DOES 1-2925,
)
Individually, and as Representatives of a class, )
)
Defendants.
)
OpenMind Solutions, Inc.,

Case No. 3:11-cv-00092-GPM-SCW
Judge: Hon. G. Patrick Murphy
Magistrate Judge: Hon. Stephen C.
Williams

BRIEF OF AMICUS CURIAE ELECTRONIC FRONTIER FOUNDATION IN
SUPPORT OF RECONSIDERATION OF THE COURT’S ORDER GRANTING EARLY
DISCOVERY OR, IN THE ALTERNATIVE, OF QUASHING PLAINTIFF’S PRECOMPLAINT SUBPOENAS

TABLE OF CONTENTS
TABLE OF AUTHORITIES ............................................................................................................ iii
INTRODUCTION ..............................................................................................................................1
ARGUMENT ......................................................................................................................................1
I.

Plaintiff Impermissibly Attempts to Circumvent Procedural Protections with an
Uncertifiable Class. .....................................................................................................................1
A. Federal Courts Disapprove of Mass Joinder of Defendants in Copyright Infringement
Cases. .................................................................................................................................... 1
B. Plaintiff’s Proposed Class Is Uncertifiable........................................................................... 3
1.

The Proposed Class Definition Is Too Indefinite to Be Manageable. ...................... 5

2.

Class Members’ Individual Defenses Will Predominate over Supposedly
“Common” and “Typical” Issues. ............................................................................ 6

3.

Plaintiff Has Designed This Lawsuit to Deprive Defendants of Adequate
Representation. ......................................................................................................... 7

II. Plaintiffs Have Not Established that the Court Has Personal Jurisdiction Over the Vast
Majority of the Defendants..........................................................................................................8
A. Plaintiff Has Not Made a Prima Facie Showing that the Court Has Personal
Jurisdication Over the Defendants Based on the Domicile of the Defendants. ................. 10
B. Plaintiff Has Not Made a Prima Facie Showing that the Court Has Personal
Jurisdication Over the Defendants Based on Acts in Illinois. ........................................... 11
C. Plaintiff May Not Use the Class Action Process to Establish Personal Jurisdiction. ........ 13
D. Plaintiff Cannot Undertake Discovery to Find Jurisdictional Facts. ................................. 15
III. Plaintiff Has Not Met the First Amendment Test for Unmasking Anonymous Speakers. .......15
A. The Right to Engage in Anonymous Speech is Protected by the First Amendment. ......... 16
B. Plaintiff’s Proposed Discovery Cannot Survive First Amendment Scrutiny ..................... 18
1.

Plaintiff Has Not Made the Requisite Prima Facie Case. ....................................... 18

2.

Defendants’ First Amendment Interests Far Outweigh Plaintiff’s “Need” for
Their Identities........................................................................................................ 19

3.

Plaintiff Must Ensure that Defendants Receive Notice of Its Pending Claim and
Its Efforts to Unmask Them. .................................................................................. 19

i

CONCLUSION .................................................................................................................................20

ii

TABLE OF AUTHORITIES
Cases
Adams v. Pipeliners Union, 798, 699 P.2d 343 (Alaska 1985) ...................................................... 8
Alliance to End Repression v. Rochford, 565 F.2d 975 (7th Cir. 1977) ......................................... 5
ALS Scan v. Digital Service Consultants, 293 F.3d 707 (4th Cir. 2002) ................................ 11, 12
Base Metal Trading, Ltd. v. OJSC “Novokuznetsky Aluminum Factory,”
283 F.3d 208 (4th Cir. 2002) ........................................................................................................ 15
Bledsoe v. Combs, No. NA-99-153-C H/G, 2000 U.S. Dist LEXIS 7434
(N.D. Ind., Mar. 14, 2000) .............................................................................................................. 5
BMG Music v. Does 1-203, No. Civ.A. 04-650, 2004 WL 953888
(E.D. Pa. Apr. 2, 2004) ................................................................................................................... 2
BMG Music v. Does 1-4, No. 3:06-cv-01579-MHP, 2006 U.S. Dist.
LEXIS 53237 (N.D. Cal. July 31, 2006)......................................................................................... 2
Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) ................................................................ 11
Cent. States, Se. & Sw. Areas Pension Fund v. Phencorp Reinsurance Co., Inc.,
440 F.3d 870 (7th Cir. 2006) .................................................................................................... 8, 15
Dendrite Int’l, Inc. v. Doe No. 3, 775 A.2d 756 (N.J. App. 2001) ................................... 17, 18, 19
Doe v. 2themart.com, 140 F. Supp. 2d 1088 (W.D. Wash. 2001) ................................................ 16
Elektra Entm’t Group, Inc. v. Does 1-9, No. 04 Civ. 2289, 2004 WL 2095581
(S.D.N.Y. Sept. 8, 2004) ............................................................................................................... 19
Enterprise Int’l v. Corporacion Estatal Petrolera Ecuatoriana, 762 F.2d 464
(5th Cir. 1985)........................................................................................................................... 8, 11
Galva Foundry Co. v. Heiden, 924 F.2d 729 (7th Cir. 1991) ....................................................... 10
Grandbouche v. Clancy, 825 F.2d 1463 (10th Cir. 1987) ............................................................ 17
Henson v. East Lincoln Township, 814 F.2d 410 (7th Cir. 1987)................................................... 4
In re Verizon Internet Servs. Inc., 257 F. Supp. 2d 244 (D.D.C.) ................................................ 16
In re Verizon Internet Servs. Inc., 351 F.3d 1229 (D.C. Cir. 2003) ............................................. 16
Indiana State Employees Assoc. v. Indiana State Highway Comm’n, 78 F.R.D. 724
(S.D. Ind. 1978) .............................................................................................................................. 6
Int’l Shoe Co. v. Washington, 326 U.S. 310 (1945) ............................................................... 11, 13
Interscope Records v. Does, 558 F. Supp. 2d 1176 (D. Kan. 2008) ............................................. 16

iii

IO Group, Inc. v. Does 1 - 453, No. 10-4382 (N.D. Cal. Jan. 10, 2011) ........................................ 2
Jennings v. AC Hydraulic A/S, 383 F.3d 546 (7th Cir. 2004)....................................................... 12
Kenro, Inc. v. Fax Daily, 962 F. Supp. 1162 (S.D. Ind. 1997) ....................................................... 6
LaFace Records, LLC v. Does 1-38, No. 5:07-CV-298-BR, 2008 WL 544992
(E.D.N.C. Feb. 27, 2008) ................................................................................................................ 2
Lamb v. United Security Life Co., 59 F.R.D. 44 (S.D. Iowa 1973) ................................................ 7
LFP Internet Group LLC v. Does 1-3,120, No. 10-2095
(N.D. Tex. Feb. 10 2011) ................................................................................................................ 2
Milliken v. Meyer, 311 U.S. 457 (1940) ....................................................................................... 10
Morrison v. YTB Int’l., 641 F. Supp. 2d 768 (S.D. Ill. 2009) ....................................................... 15
Motown Records v. Does 1-252, No. 1:04-CV-439-WBH (N.D. Ga. Aug. 16, 2004) ................... 2
Nat’l Union Fire Ins. Co. v. Midland Bancor, Inc., 158 F.R.D. 681
(D. Kan. 1994) ................................................................................................................................ 4
New York Times v. Sullivan, 376 U.S. 254 (1964)........................................................................ 16
Oshana v. Coca-Cola Co., 472 F.3d 506 (7th Cir. 2006) ........................................................... 3, 5
Pabst Brewing, Inc. v. Corrao, 161 F.3d 434 (7th Cir. 1998) ........................................................ 4
Phillips Petrol. Co. v. Shutts, 472 U.S. 797 (1985) ................................................................ 13, 14
RAR, Inc. v. Turner Diesel, Ltd., 107 F.3d 1272 (7th Cir. 1997) ................................................... 9
Reno v. ACLU, 521 U.S. 844 (1997)............................................................................................. 16
Revell v. Lidov, 317 F.3d 467 (5th Cir. 2002)............................................................................... 12
Shelley v. Kraemer, 334 U.S. 1 (1948) ......................................................................................... 16
Silkwood v. Kerr-McGee Corp., 563 F.2d 433 (10th Cir. 1977) .................................................. 17
Sony Music Entm’t, Inc. v. Does 1-40, 326 F. Supp. 2d 556
(S.D.N.Y. 2004) ........................................................................................................................ 3, 16
Talley v. California, 362 U.S. 60 (1960) ...................................................................................... 16
Ticketreserve, Inc. v. Viagogo, Inc., 656 F. Supp. 2d 775 (N.D. Ill. 2009) .................................. 15
Tilley v. TJX Cos., 345 F.3d 34 (1st Cir. 2003) .............................................................................. 1
Twentieth Century Fox Film Corp., et al., v. Does 1-12, No. C-04-04862
(N.D. Cal. Nov. 16, 2004)............................................................................................................... 2
uBID, Inc. v. The GoDaddy Grp., Inc., 623 F.3d 423 (7th Cir. 2010) ............................................ 9
iv

UMG Recordings, Inc. v. Does 1-4, No. 06-0652, 2006 WL 1343597 (N.D. Cal. Mar. 6, 2006) 16
UMG Recordings, Inc., et al. v. Does 1-51, No. A-04-CA-704 LY (W.D. Tex. Nov. 17, 2004)... 2
United Elec. Radio and Mach. Workers of America v. 163 Pleasant Street Corp.,
960 F.2d 1080 (1st Cir. 1992) ......................................................................................................... 8
United States v. Henderson, 209 Fed. Appx. 401 (5th Cir. 2006) ................................................ 10
Vandeveld v. Christoph, 877 F.Supp. 1160 (N.D. Ill. 1995) ........................................................ 11
Virgin Records Am. v. Does 1-44, No. 1:04-CV-0438-CC (N.D. Ga. March 3, 2004) .................. 3
West Coast Productions v. Does 1-2010, No. 3:10-CV-93
(N.D. W.Va., Dec. 16, 2010) .......................................................................................................... 2
White v. Sundstrand Corp., 256 F.3d 580 (7th Cir. 2001) .............................................................. 8
Whitson v. Heilig-Meyers Furniture, No. CV 94-PT-0309-E, 1995 U.S. Dist.
LEXIS 4312 (N.D. Ala. Feb. 9, 1995) .......................................................................................... 14
Winder Licensing Inc. v. King Instrument Corp., 130 F.R.D. 392 (N.D. Ill. 1990) ....................... 3
World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (1980) ................................................ 8
Wright v. Schock, 742 F.2d 541 (9th Cir. 1984) ............................................................................. 7
Statutes and Legislative Authorities
17 U.S.C. § 412 ............................................................................................................................... 6
17 U.S.C. § 504(c) ........................................................................................................................ 14
Fed. R. Civ. P. 23 ............................................................................................................................ 3
Fed. R. Civ. P. 23(b)(1)(A) ............................................................................................................. 3
Fed. R. Civ. P. 23(b)(1)(B) ............................................................................................................. 3
Fed. R. Civ. P. 23(b)(2)................................................................................................................... 4
Fed. R. Civ. P. 23(h) ....................................................................................................................... 7
Other Authorities
NEWBERG ON CLASS ACTIONS § 4.47 .............................................................................................. 4

v

INTRODUCTION
While the Court granted Plaintiff’s motion for early discovery on February 11, 2011, it
did so on an ex parte basis and without the benefit of having been informed of the critical
substantive and procedural issues at stake for the literally thousands of anonymous Defendants
this lawsuit targets. This brief window – prior to Defendants’ identities being disclosed – may
be the last chance that the Court has to ensure that the Defendants are treated justly, that their
rights are protected, and that they will not be induced to settle by the fear of embarrassment or
humiliation. The federal courts have safeguards, both procedural and substantive, to protect the
rights of individual defendants in all litigation. Plaintiff has flouted those procedures, violating
the rights of the John Doe Defendants. Amicus Electronic Frontier Foundation (“EFF”)
respectfully urges the Court to rescind its approval of pre-complaint discovery and take steps to
restore fairness to this process.
ARGUMENT
I.

Plaintiff Impermissibly Attempts to Circumvent Procedural Protections with an
Uncertifiable Class.
Plaintiff’s proposed “class” of 2,925 individual alleged infringers is a transparent attempt

to avoid established Due Process protections by filing a “class action” with no one present to call
the Court’s attention to these very safeguards, and then using this improper vehicle to unmask as
many Does as possible. The Court should call an immediate halt to Plaintiff’s gamesmanship.
A.

Federal Courts Disapprove of Mass Joinder of Defendants in Copyright
Infringement Cases.

Plaintiff is not the first to sue numerous unrelated defendants in a single copyright
infringement lawsuit, based only on the coincidence that they allegedly infringed on works
owned by the same copyright holder. See, e.g., Tilley v. TJX Inc., 345 F.3d 34, 42-43 (1st Cir.
2003) (vacating defendant class certification order in copyright infringement case). Federal
courts, however, have recognized that mass copyright suits may deny individual justice to those
caught up in a plaintiff’s indiscriminate dragnet. Several courts have severed these cases,
effectively dismissing more than 40,000 Doe defendants nationwide. See, e.g., LFP Internet
1

Group LLC v. Does 1-3,120, No. 10-2095 (N.D. Tex. Feb. 10, 2011) (quashing subpoenas,
holding that Plaintiff did not show that the Defendants were “in any way related to each other, or
that they acted in concert or as a group in their allegedly offending actions”) (Amicus Curiae The
Electronic Frontier Foundation’s Request for Judicial Notice (“RJN”), Docket No. 12, Ex. F); IO
Group, Inc. v. Does 1 - 453, No. 10-4382 (N.D. Cal. Jan. 10, 2011) (“[T]he allegations that
defendants simply used the same peer-to-peer network to download plaintiff’s work . . . is
insufficient to allow plaintiff to litigate against hundreds of different Doe defendants in one
action.”) (RJN, Ex. G); West Coast Productions v. Does 1-2010, No. 3:10-CV-93 (N.D. W.Va.,
Dec. 16, 2010) (RJN, Ex. A).
Orders such as these, disapproving of joining large numbers of defendants in a single
action under Rule 20, follow a pattern that began as early as 2004. See, e.g., BMG Music v. Does
1-203, No. Civ.A. 04-650, 2004 WL 953888, at *1 (E.D. Pa. Apr. 2, 2004) (severing lawsuit
involving 203 defendants); LaFace Records, LLC v. Does 1-38, No. 5:07-CV-298-BR, 2008 WL
544992, at *2 (E.D.N.C. Feb. 27, 2008) (severing a lawsuit against thirty-eight defendants where
each defendant used the same ISP as well as some of the same networks to commit the exact
same violation of the law in exactly the same way: “[M]erely committing the same type of
violation in the same way does not link defendants together for purposes of joinder.”); BMG
Music v. Does 1-4, No. 3:06-cv-01579-MHP, 2006 U.S. Dist. LEXIS 53237, at *5-6 (N.D. Cal.
July 31, 2006) (severing, sua sponte, multiple defendants in action where the only connection
between them was allegation they used same ISP to conduct copyright infringement); UMG
Recordings, Inc., et al. v. Does 1-51, No. A-04-CA-704 LY (W.D. Tex. Nov. 17, 2004) (RJN,
Ex. B) (dismissing without prejudice all but the first of 254 defendants accused of unauthorized
music file-sharing); Twentieth Century Fox Film Corp., et al., v. Does 1-12, No. C-04-04862
(N.D. Cal. Nov. 16, 2004) (permitting discovery to identify first of twelve Doe defendants but

2

staying case against remaining Does until plaintiff could demonstrate proper joinder) (RJN, Ex.
C).1
B.

Plaintiff’s Proposed Class Is Uncertifiable.

Presumably recognizing that the present action could not be maintained under Rule 20,
Plaintiff instead proposes to maintain it as a class action under Rule 23. The same issues of
procedural unfairness, unmanagability, and sacrifice of individual rights that render joinder
inappropriate in mass-download infringement make the proposed use of a class action procedure
even more inappropriate. Indeed, Plaintiff’s proposed class violates nearly every requirement of
Rule 23.
Rule 23 states:
One or more members of a class may sue or be sued as representative parties on
behalf of all members only if:
(1) the class is so numerous that joinder of all members is impracticable,
(2) there are questions of law or fact common to the class,
(3) the claims or defenses of the representative parties are typical of the
claims or defenses of the class; and
(4) the representative parties will fairly and adequately protect the interests
of the class.
Fed. R. Civ. P. 23.
These requirements are commonly known as numerosity, commonality, typicality, and
adequacy. Courts also require that a proposed class definition be “definite enough that the class
can be ascertained.” Oshana v. Coca-Cola Co., 472 F.3d 506, 513 (7th Cir. 2006). In addition
to satisfying these threshold requirements, any class action must fit within one of the categories
detailed in Rule 23(b). Here, Plaintiff proposes to certify the class under section (b)(3):2
1

Amicus recognizes that such judicial analysis has not been universal. See, e.g., Motown
Records v. Does 1-252, No. 1:04-CV-439-WBH (N.D. Ga. Aug. 16, 2004) (denying motion to
quash); Virgin Records Am. v. Does 1-44, No. 1:04-CV-0438-CC (N.D. Ga. Mar. 3, 2004)
(granting leave to take expedited discovery); Sony Music Entm’t, Inc. v. Does 1-40, 326 F. Supp.
2d 556, 564 (S.D.N.Y. 2004) (applying First Amendment balancing test but denying as
premature motion to quash based on misjoinder and lack of personal jurisdiction).
2
Plaintiff proposes to proceed only under section (b)(3) with good reason. None of the other
options is appropriate in copyright infringement cases. Section (b)(1)(A), which allows class
3

A class action may be maintained only if Rule 23(a) is satisfied and if:
(3) the court finds that the questions of law or fact common to class
members predominate over any questions affecting only individual
members, and that a class action is superior to other available methods for
fairly and efficiently adjudicating the controversy. The matters pertinent to
these findings include:
(A) the class members’ interests in individually controlling the
prosecution or defense of separate actions;
(B) the extent and nature of any litigation concerning the
controversy already begun by or against class members;
(C) the desirability or undesirability of concentrating the litigation
of the claims in the particular forum; and
(D) the likely difficulties in managing a class action.
Id.
These two requirements are commonly known as predominance and superiority. In the
present case, the purported class as described by Plaintiff clearly violates definiteness,
commonality, typicality, adequacy, predominance, and superiority. It arguably does satisfy
numerosity, but only because Plaintiff chosen to pursue its distinct complaints against different
Defendants en masse.
Due to the inherently troubling nature of suing a class of unnamed defendants, most – if
not all – of whom will not be responsible for his or her own defense, the “due process rights of
unnamed class members of a defendant class are entitled to special solicitude.” Pabst Brewing,
Inc. v. Corrao, 161 F.3d 434, 439 (7th Cir. 1998); see also Newberg on Class Actions § 4.47
(“[A] defendant class requires closer scrutiny of Rule 23 tests to assure fairness to absent
actions when there is a danger of imposing “incompatible standards of conduct for the party
opposing the class,” F.R.C.P. 23(b)(1)(A), does not apply because an infringement verdict sets a
standard of conduct for a defendant, not for a plaintiff. See Winder Licensing Inc. v. King
Instrument Corp., 130 F.R.D. 392 (N.D. Ill. 1990) (denying certification in patent infringement
case). Section (b)(1)(B), which allows class actions when individual verdicts would in practice
be dispositive of other class members’ rights, F.R.C.P. 23(b)(1)(B), does not apply because
collateral estoppel would work only against a losing plaintiff, not against a defendant class
member. See Nat’l Union Fire Ins. Co. v. Midland Bancor, Inc., 158 F.R.D. 681, 686-87 (D.
Kan. 1994). And section (b)(2), which allows class treatment when “the party opposing the class
has acted or refused to act on grounds that apply generally to the class,” F.R.C.P. 23(b)(2), does
not apply because in a defendant class action, it is the class members, not the “party opposing the
class,” who have acted or refused to act. See Henson v. East Lincoln Township, 814 F.2d 410,
414-17 (7th Cir. 1987).
4

members based on long-standing due process protections for defendants. . . [S]tricter due process
considerations put greater limits on the use of defendant classes than plaintiff classes.”).
Amicus recognizes that the issue of whether to certify a class is not directly before the
Court, as Plaintiff has not moved for certification. That is precisely the point of Plaintiff’s
strategy. By deferring certification, Plaintiff hopes to deter the Court from inspecting too closely
its Potemkin class action. As with other mass copyright suits filed all over the country, the true
goal is not class litigation or even to reach the merits, but to discover Defendants’ identities and
to extract settlements from fearful, unrepresented, and poorly informed individuals.
1.

The Proposed Class Definition Is Too Indefinite to Be Manageable.

Although Plaintiff has submitted a list of alleged infringers, identified by their IP
addresses at particular times (Complaint, Ex. A), it does not confine its proposed class definition
to the individuals on that list. Instead, Plaintiff proposes a class defined as:
All persons, except those with whom settlement has been reached, engaged in
copyright infringement activity via BitTorrent file sharing protocol during
relevant time period (October 2010, until the date the Court enters an order
certifying a defendant class) against Plaintiff’s copyrighted works associated with
the torrent files enumerated in Exhibit A.
Complaint ¶ 32.3
Plaintiff’s proposed definition is not “definite enough that the class can be ascertained.”
Oshana, 472 F.3d at 513 (citing Alliance to End Repression v. Rochford, 565 F.2d 975, 977 (7th
Cir. 1977)). A class definition must enable a court to “determine whether any individual was a
member of the class without hearing evidence on what would amount to the merits of each
person's claim.” Bledsoe v. Combs, No. NA-99-153-C H/G, 2000 U.S. Dist LEXIS 7434, at *11
(N.D. Ind., Mar. 14, 2000). Here, the class definition depends on whether an individual
“engaged in copyright infringement activity” of one of Plaintiff’s works – that is, on the

3

In the alternative, Plaintiff proposes a sub-class of Illinois residents only. Complaint ¶ 33.
While this restriction would address some of the personal jurisdiction issues with respect to the
proposed class, it would not solve the other problems described by amicus. Moreover, it will be
impossible to determine which individuals are class members of an Illinois sub-class without
engaging in precisely the ex parte discovery to which amicus objects.
5

substantive liability of each individual defendant under the Copyright Act. That, however, will
be an intensely fact-specific inquiry, including such issues as whether the Defendant’s IP address
at the relevant time has been correctly identified, whether another person was using the
Defendant’s Internet connection, and whether the Defendant’s conduct was a fair use or
otherwise permitted by the Copyright Act. Such a class definition, which would require a
“determination of ultimate liability as to that person,” Indiana State Employees Assoc. v. Indiana
State Highway Comm’n, 78 F.R.D. 724, 725 (S.D. Ind. 1978), does not satisfy Rule 23(a).
Kenro, Inc. v. Fax Daily, 962 F. Supp. 1162, 1169 (S.D. Ind. 1997). Rather than confining its
efforts to a discrete and identifiable set of defendants, as required by the Federal Rules, Plaintiff
impermissibly seeks the Court’s assistance in pursuing a fishing expedition against an uncertain
and ill-defined group of individual Defendants.
2.

Class Members’ Individual Defenses Will Predominate over
Supposedly “Common” and “Typical” Issues.

In light of Plaintiff’s pre-complaint discovery request, its claims that “typical defenses
common to all and certain to be vigorously asserted by the named Defendants include First
Amendment rights to anonymous communication and rights to privacy,” Complaint ¶ 36, is
disingenuous. If this Court allows Plaintiff to take discovery from ISPs on the identities of
Defendants, their First Amendment and privacy claims will become moot. Thus, Plaintiff has
structured its lawsuit so that by the time class representatives capable of asserting Defendants’
privacy rights exist, those rights will already have been violated. They will not then be a
“typical” issue in common among the class, leaving a class lacking in the required typicality;
indeed, Plaintiff admits as much, stating in its Complaint that “some defenses of
noninfringement may be more tailored to an individual.” Complaint ¶ 36.
This problem is especially acute here. For example, Plaintiff alleges infringement of
many different copyrighted works, yet it fails to allege that it owned registrations for each and in
fact only alleges that it owns “application[s] for registration.” Complaint, Ex. A; Complaint ¶
20. Under 17 U.S.C. § 412, a plaintiff cannot sue for statutory damages or attorneys’ fees unless

6

the infringement “commenced after first publication of the work and before the effective date of
its registration, unless the registration is made within three months after the first publication of
the work.” It seems highly unlikely that the registration for each work occurred less than three
months before any of the Defendants allegedly infringed the work, especially because some of
the infringements alleged by Plaintiff occurred as early as January 2010. See, e.g., Complaint,
Ex. A at 64. Therefore, it is entirely feasible – and in fact likely – that many Defendants will be
able to argue that Plaintiff is not entitled to statutory damages and attorneys’ fees, while some
Defendants, faced with defending infringement claims based on different copyrights, may not be
able to make the same arguments.
3.

Plaintiff Has Designed This Lawsuit to Deprive Defendants of
Adequate Representation.

Perhaps most troubling about Plaintiff’s proposed class is that it seems designed precisely
to deny Defendants the type of robust representation they will need. Plaintiff claims that “Class
representatives will be represented by counsel competent and experienced in the defense of
copyright and class action litigation.” Complaint ¶ 37. At this point, this is nothing more than
speculation and reasons exist to doubt that it will ever be true. It is unlikely that the named class
representatives, whoever they may eventually be, will be willing or able to bear the heavy
financial burden of litigating a complex class action with “competent and experienced” counsel,
and it is unfair to expect them to do so. The nature of Plaintiff’s works – “adult entertainment
content,” Complaint ¶ 3 – and the nature of the alleged infringement – downloading and
uploading those works as part of a peer-to-peer file-sharing network – make it likely that most or
all of the class members will be individuals, rather than businesses with correspondingly large
resources necessary to conduct large-scale class action litigation.
Further, the fact that this is purportedly a defendant class action removes the most
common form of class action financing: contingent fee awards. See Fed .R. Civ. P. 23(h)
(providing for fee awards to successful class counsel). “Absent class members have no
obligation to pay attorneys’ fees and litigation costs, except when they elect to accept the benefit

7

of the litigation.” Wright v. Schock, 742 F.2d 541, 545 (9th Cir. 1984) (citing Lamb v. United
Security Life Co., 59 F.R.D. 44, 48-49 (S.D. Iowa 1973)). In a plaintiff class action, the
“benefit” is provided by the defendant to the class, and is available to serve as a source of fees.
In a defendant class action, however, all that the class receives if it wins is the continuation of the
status quo. Accordingly, “when there is no fund, a court cannot assess attorney's fees against
individual class members.” Adams v. Pipeliners Union 798, 699 P.2d 343, 349 (Alaska 1985);
see also White v. Sundstrand Corp., 256 F.3d 580, 585 (7th Cir. 2001) (refusing to assess costs
against absent class members, who had not been provided with notice or an opportunity to opt
out). The result is that whomever Plaintiff attempts to designate as class representative will be
left to finance the entire class defense on his or her own, most likely leaving the remainder of the
class with inadequate representation.
II.

Plaintiffs Have Not Established that the Court Has Personal Jurisdiction Over the
Vast Majority of the Defendants.
In addition to the numerous other fatal flaws in Plaintiff’s litigation approach, Plaintiff

has not met and cannot meet its burden to establish that this Court has personal jurisdiction over
the vast majority of the Defendants. Consequently, the Court may not authorize or enforce any
discovery Plaintiff seeks about or directed at those Defendants. Cent. States, Se. & Sw. Areas
Pension Fund v. Phencorp Reinsurance Co., Inc., 440 F.3d 870, 877 (7th Cir. 2006) (holding
that a prima facie case for personal jurisdiction must be made before discovery is allowed); see
also Enterprise Int’l v. Corporacion Estatal Petrolera Ecuatoriana, 762 F.2d 464, 470-471 (5th
Cir. 1985) (no authority to issue preliminary relief without personal jurisdiction); accord United
Elec. Radio and Mach. Workers of America v. 163 Pleasant Street Corp., 960 F.2d 1080, 1084
(1st Cir. 1992) (same).
The Constitution imposes on every plaintiff the burden of establishing personal
jurisdiction as a fundamental matter of fairness, recognizing that no defendant should be forced
to have his rights and obligations determined in a jurisdiction with which he has had no contact.
These requirements allow “potential defendants to structure their primary conduct with some

8

minimum assurance as to where that conduct will and will not render them liable to suit.”
World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980). Accordingly, the
Plaintiff bears the burden of pleading facts sufficient to support the Court’s exercise of personal
jurisdiction over the Defendants. Simply reciting personal jurisdiction requirements is not
enough, nor are the assertions of naked legal conclusions; rather, Plaintiff must assert the factual
basis underlying its claims. See, e.g., uBID, Inc. v. The GoDaddy Grp., Inc., 623 F.3d 423, 423
(7th Cir. 2010) (stating that plaintiff bears the burden of making a prima facie case for personal
jurisdiction); RAR, Inc. v. Turner Diesel, Ltd., 107 F.3d 1272, 1276 (7th Cir. 1997) (“The
plaintiff, moreover, has the burden of demonstrating the existence of personal jurisdiction.”).
Plaintiff has offered three theories for the Court’s exercise of personal jurisdiction over
the Defendants: first, that “putative named class representative Defendants are residents of
Illinois”; second, that the “Court has in personam jurisdiction over absent class members because
due process is satisfied by providing them with best practicable notice, an opportunity to opt-out,
and adequate representation”; and third, that Defendants’ “infringing activity should have
reasonably been anticipated to violate the Copyright Act in this jurisdiction.” Complaint ¶ 6.
Plaintiff has not made a prima facie showing for the first or third allegation for the vast majority
of the Defendants, and the second allegation misstates the applicable law. Consequently,
Plaintiff’s motion for discovery into the identities of the Defendants should be denied.
At the outset, Plaintiff’s supposed distinction between “putative named class
representative Defendants” and “absent class members” is meaningless. Plaintiff has not even
attempted to nominate class representatives. Instead, all Defendants are currently “absent,”
unrepresented, and without notice of the present lawsuit. Accordingly, amicus will discuss
Plaintiff’s jurisdictional allegations without differentiating among Defendants.

9

A.

Plaintiff Has Not Made a Prima Facie Showing that the Court Has Personal
Jurisdication Over the Defendants Based on the Domicile of the Defendants.

Federal courts may exercise personal jurisdiction over individuals whose domicile is
within the jurisdiction.4 See, e.g., United States v. Henderson, 209 Fed. Appx. 401, 402 (5th Cir.
2006); Milliken v. Meyer, 311 U.S. 457, 463-64 (1940). For many Defendants, however,
Plaintiff has plainly failed to make a prima facie showing to support this purported basis for
jurisdiction. The only jurisdictional facts alleged by Plaintiff are the “IP address identifying each
Defendant, as well as the corresponding torrent file swarm/copyright work in which Defendant
was participating, and the date and time of Defendant’s activity” that it includes as Exhibit A to
its Complaint. Complaint ¶ 23; Complaint, Ex. A. Not only does this submission not indicate
that many of the Defendants are residents of Illinois; it suggests that the Defendants were outside
of Illinois when the allegedly infringing activity took place.
For example, the Plaintiff points to one Defendant with the IP address 137.229.56.183.
Complaint, Ex. A, at 3. Based on Plaintiff’s own evidence, this IP address is registered to the
University of Alaska. Id. Other ISPs identified by Exhibit A include MetroCast Cablevision of
New Hampshire LLC, id. at 5, the Massachusetts Institute of Technology, id. at 10, and Georgia
Public Web Inc., id. at 12. Commercial ISPs named dozens of times in Exhibit A to the
Complaint, such as Cox Communications, id. passim, do not provide Internet service in Illinois.
With no evidence supporting the claim that Defendants are “residents” of Illinois, and
with Plaintiff’s own submissions supporting the opposite conclusion – that the vast majority of
the Defendants indeed are domiciled elsewhere – the Court should find that it lacks personal
jurisdiction over Defendants.

4

As pled, Plaintiff alleges that the Court has personal jurisdiction over the Defendants based on
“residen[cy]” as opposed to domicile. Complaint ¶ 6. Although residency is an insufficient
basis for personal jurisdiction as individuals may have several residencies but only one domicile
at a time. See, e.g., Galva Foundry Co. v. Heiden, 924 F.2d 729, 730 (7th Cir. 1991) (disputing
an argument that one can have two residencies, choosing one as his domicile “because it makes
changing one’s domicile too easy”). Defendants will treat Plaintiff’s jurisdictional allegation as
one based on domicile and not residency for purposes of this brief.
10

B.

Plaintiff Has Not Made a Prima Facie Showing that the Court Has Personal
Jurisdication Over the Defendants Based on Acts in Illinois.

Plaintiff alternatively argues that the Court has personal jurisdiction over the Defendants
because Defendants’ “infringing activity should have been reasonably anticipated to violate the
Copyright Act in this jurisdiction.” Complaint ¶ 6. Plaintiff has not met its prima facie burden
on this jurisdictional argument either.
In order for a court to exercise personal jurisdiction over a non-consenting, non-resident
defendant, suit in the forum at issue must be consistent with the requirements of the Due Process
Clause.5 Accordingly, a plaintiff must demonstrate that: (1) the non-resident “has ‘minimum
contacts’ with the forum” and (2) “requir[ing] the defendant to defend its interests in that state
‘does not offend traditional notions of fair play and substantial justice.’” Int’l Shoe Co. v.
Washington, 326 U.S. 310, 316 (1945); see also Burger King Corp. v. Rudzewicz, 471 U.S. 462,
474-77 (1985). Plaintiff has not met this burden.
As discussed above, the only jurisdictional facts identified by the Plaintiff (i.e., the IP
addresses it associates with each Defendant) give no indication that the copyright infringment
occurred in this state. Plaintiff provides no additional evidence otherwise.6 Without the
necessary prima facie evidence to support the claim that the alleged infringement took place
within the state, Plaintiff has not established minimum contacts and therefore this Court cannot
exercise personal jurisdication over the Doe Defendants. See, e.g., Enterprise Int’l, 762 F.2d at
470-471 (no authority to issue preliminary relief without personal jurisdiction).
To the extent that Plaintiff claims personal jurisdiction based on the cross-border
accessibility of information on the Internet, courts have long rejected such theories of effective
universal jurisdiction. As the Fourth Circuit explained in ALS Scan v. Digital Service
Consultants, 293 F.3d 707 (4th Cir. 2002):

5

A court’s exercise of personal jurisdiction over non-consenting, non-resident defendants must
additionally be authorized by statute. The Illinois long-arm statute reaches as far as the Due
Process Clause will permit. See, e.g., Vandeveld v. Christoph, 877 F.Supp. 1160, 1164 (N.D. Ill.
1995) (“[T]he Illinois long-arm statute is now co-extensive with the limits of due process.”).

11

The argument could . . . be made that the Internet’s electronic signals are
surrogates for the person and that Internet users conceptually enter a State to the
extent that they send their electronic signals into the State, establishing those
minimum contacts sufficient to subject the sending person to personal jurisdiction
in the State where the signals are received. .. But if that broad interpretation of
minimum contacts were adopted, State jurisdiction over persons would be
universal, and notions of limited State sovereignty and personal jurisdiction
would be eviscerated.
Id. at 712-713 (citations omitted). Accordingly, the Fourth Circuit limited the exercise of
personal jurisdiction based on Internet usage to situations where the defendant “(1) directs
electronic activity into the State, (2) with the manifested intent of engaging in business or other
interactions within the State, and (3) that activity creates, in a person within the State, a potential
cause of action cognizable in the State’s courts.” Id. at 714.
Under this standard, which has been echoed by the Seventh Circuit, “a person who
simply places information on the Internet does not subject himself to jurisdiction in each State
into which the electronic signal is transmitted and received.” Id.; see also Jennings v. AC
Hydraulic A/S, 383 F.3d 546, 550 (7th Cir. 2004) (“Premising personal jurisdiction on the
maintenance of a website, without requiring some level of ‘interactivity’ between the defendant
and consumers in the forum state, would create almost universal personal jurisdiction because of
the virtually unlimited accessibility of websites across the country.”); Revell v. Lidov, 317 F.3d
467, 475-76 (5th Cir. 2002) (“The defendant must be chargeable with knowledge of the forum at
which his conduct is directed in order to reasonably anticipate being haled into court in that
forum.”).
In the immediate case, even assuming that each of the Defendants knew that he or she
was infringing a copyright of OpenMind Solutions, there is no evidence that OpenMind has any
connection to Illinois, nor, if such a connection does exist, that any of the Does were aware of it.
Consequently, Plaintiff has not made a prima facie showing that any of the Defendants had any
idea that Plaintiff OpenMind Solutions, Inc., would suffer any harm in Illinois.
Requiring individuals from across the country urgently to secure counsel far from home,
where they are unlikely to have contacts, creates exactly the sort of hardship and unfairness that
the personal jurisdiction requirements exist to prevent. In this particular instance the hardship is
12

very clear. When the underlying claim is a single count of copyright infringement, the cost of
securing counsel even to defend a Defendant’s identity is likely more than the cost of settlement
and possibly even more than the cost of judgment if the Defendant lost in the litigation entirely.
Plaintiff has not met its burden to establish this Court’s jurisdiction over the Does, a
burden that must be met prior to early discovery, not after. Accordingly, amicus urges the Court
to vacate its ruling on Plaintiff’s Motion for Early Discovery, quash all pending subpoenas, and
issue a sua sponte order requiring Plaintiff to show cause why the action should not be dismissed
against those Defendants whose IP addresses do not suggest presence in the forum.
C.

Plaintiff May Not Use the Class Action Process to Establish Personal
Jurisdiction.

Plaintiff also argues that the Court has personal jurisdiction over the Defendants as a
defendant class “because due process is satisfied by providing them with best practicable notice,
an opportunity to opt-out, and adequate representation.” Complaint ¶ 6. This claim is based
upon an entirely inapposite Supreme Court decision holding that a plaintiff class members’ Due
Process rights were not violated by their inclusion in the class even if the lower court would not
have had personal jurisdiction over them. Phillips Petrol. Co. v. Shutts, 472 U.S. 797, 814
(1985). This decision has no bearing here, as it applied only to a particular type of plaintiff class.
Indeed, Shutts expressly reserved decision on jurisdiction over defendant classes:
Our holding today is limited to those class actions which seek to bind known
plaintiffs concerning claims wholly or predominately for money judgments. We
intimate no view concerning other types of class actions, such as those seeking
equitable relief. Nor, of course, does our discussion of personal jurisdiction
address class actions where the jurisdiction is asserted against a defendant class.
Id. at 813 n.3.
The Shutts Court’s reasoning repeatedly emphasized the basic asymmetry between
plaintiffs and defendants. It explained that the purpose of the Int’l Shoe “minimum contacts”
inquiry was “to protect a defendant from the travail of defending in a distant forum,” id. at 807,
and that “the burdens placed by a State upon an absent class-action plaintiff are not of the same
order or magnitude as those it places upon an absent defendant,” id. at 808. In contrast with a

13

plaintiff who risks losing only her ability to bring suit, an “out-of-state defendant summoned by a
plaintiff is faced with the full powers of the forum State to render judgment against it.” Id.
(emphasis in original).
In a lawsuit for damages, like the present action, defendants are equally at risk whether
they are sued individually or en masse. Unlike a plaintiff, who can only gain by bringing suit, a
defendant must litigate merely to maintain the status quo, sometimes in the face of immense
potential liability. Here, Plaintiff alleges “willful” infringement, Complaint ¶ 26, and seeks
statutory damages, Complaint ¶ 28, which can range up to $150,000. See 17 U.S.C. § 504(c).
Plaintiff also seeks the extraordinary remedy of an injunction, Complaint ¶10, attorney’s fees,
Complaint ¶ 29, and to commence discovery against Defendants, Complaint ¶ 2. As the Court
explained:
The defendant may be forced to participate in extended and often costly
discovery, and will be forced to respond in damages or to comply with some other
form of remedy imposed by the court should it lose the suit. The defendant may
also face liability for court costs and attorney's fees. These burdens are
substantial, and the minimum contacts requirement of the Due Process Clause
prevents the forum State from unfairly imposing them upon the defendant.
Shutts, 472 U.S. at 808. Thus, before a forum court may exercise such extensive power over a
defendant, it “must have personal jurisdiction over each member of a defendant class.” Whitson
v. Heilig-Meyers Furniture, 1995 U.S. Dist. LEXIS 4312, at *48 n.17 (N.D. Ala. Feb. 9, 1995).
Plaintiff’s notice of subpoenas also violates Shutts’s central holding that, in order to
comport with due process, class members must be adequately represented “at all times.” Shutts,
472 U.S. at 812. Here, not only has no class been certified and no class counsel appointed to
represent Defendants, there are currently no class members before the Court and no counsel for
any Defendants, even in an individual capacity. Complete absence of representation is the very
opposite of the adequate representation at all times required by Shutts. Plaintiff cannot request
that the Court treat this case as a class action for discovery purposes while also asking the Court
to disregard the basic due process rights the Supreme Court has recognized for class members.

14

D.

Plaintiff Cannot Undertake Discovery to Find Jurisdictional Facts.

To the extent that Plaintiff argues that it should be granted leave to seek discovery in
support of its jurisdictional allegations, this effort too must fail. Plaintiff’s failure to meet its
jurisdictional burden is to be determined before discovery is issued, not after.
When seeking discovery on personal jurisdiction, a plaintiff is required to make a
“preliminary showing of jurisdiction” before she is entitled to discovery. See, e.g.,
Ticketreserve, Inc. v. Viagogo, Inc., 656 F. Supp. 2d 775, 782 (N.D. Ill. 2009) (“At minimum,
the plaintiff must establish a prima facie showing of personal jurisdiction before discovery will
be permitted.”); see also Cent. States, 230 F.3d 934 at 946 (“At a minimum, the plaintiff must
establish a colorable or prima facie showing of personal jurisdiction before discovery should be
permitted.”). However, it is well within the district court’s discretion to deny discovery requests
where the plaintiff “offers only speculation” of jurisdiction; “fishing expeditions” into
jurisdictional facts are strongly disfavored. See, e.g., Base Metal Trading, Ltd. v. OJSC
“Novokuznetsky Aluminum Factory”, 283 F.3d 208, 216 n.3 (4th Cir. 2002) (holding that a court
can deny a discovery request if “the plaintiff simply wants to conduct a fishing expedition in the
hopes of discovering some basis of jurisdiction”); Morrison v. YTB Int’l., 641 F. Supp. 2d 768,
781 n.8 (S.D. Ill. 2009) (denying a discovery request is appropriate where “the requested
discovery amounts merely to a fishing expedition”). Where, as here, the Plaintiff’s own factual
allegations plainly serve only to demonstrate the absence of proper jurisdiction, the Court should
decline to extend this case further.
III.

Plaintiff Has Not Met the First Amendment Test for Unmasking Anonymous
Speakers.
Plaintiffs are often allowed discovery at the outset of a lawsuit to identify otherwise

unknown persons alleged to have committed a legal wrong. However, in its motion for leave to
seek early discovery, Plaintiff failed to apprise the Court of the appropriate discovery standard in
cases where, as here, Defendants are alleged to have engaged in anonymous communication and
Plaintiff’s claims arise from those alleged activities. Especially given the number of Doe

15

Defendants affected and the pornographic nature of the movies in question, it is crucial that
Plaintiff follows the appropriate procedures before individuals’ identities are disclosed.
A.

The Right to Engage in Anonymous Speech is Protected by the First
Amendment.

The United States Supreme Court has consistently upheld the right to anonymous speech
in a variety of contexts, noting that “[a]nonymity is a shield from the tyranny of the majority . . .
[that] exemplifies the purpose [of the First Amendment] to protect unpopular individuals from
retaliation . . . at the hand of an intolerant society.” McIntyre v. Ohio Elections Comm’n, 514
U.S. 334, 357 (1995). This fundamental right enjoys the same protections whether the context
for speech and association is an anonymous political leaflet, an Internet message board or a
video-sharing site. Reno v. ACLU, 521 U.S. 844, 870 (1997) (holding that there is “no basis for
qualifying the level of First Amendment scrutiny that should be applied to” the Internet); see
also, e.g., Doe v. 2themart.com, 140 F. Supp. 2d 1088, 1092 (W.D. Wash. 2001) (stating that the
Internet promotes the “free exchange of ideas” because people can easily engage in such
exchanges anonymously).
First Amendment protection extends to the anonymous publication of expressive works
on the Internet, even if the publication is alleged to infringe copyrights. See Sony Music Entm’t,
Inc. v. Does 1-40, 326 F. Supp. 2d 556, 564 (S.D.N.Y. 2004) (“The use of P2P file copying
networks to download, distribute or make sound recordings available qualifies as speech entitled
to First Amendment protection.”); see also, e.g., In re Verizon Internet Servs. Inc., 257 F. Supp.
2d 244, 260 (D.D.C.), rev’d on other grounds, 351 F.3d 1229 (D.C. Cir. 2003); Interscope
Records v. Does, 558 F. Supp. 2d 1176, 1178 (D. Kan. 2008); UMG Recordings, Inc. v. Does 14, No. 06-0652, 2006 WL 1343597, at *2 (N.D. Cal. Mar. 6, 2006). In Sony, the court concluded
that a file sharer is “making a statement” by downloading a work without charge or license. 326
F. Supp. 2d at 564. In addition, a file sharer is expressing himself by selecting and sharing
particular content. Id. Thus, a file sharer is entitled to “some level of First Amendment
protection.” Id.

16

Because the First Amendment protects anonymous speech and association, efforts to use
the power of the courts to pierce anonymity are subject to a qualified privilege.7 And, just as in
other cases in which litigants seek information that may be privileged, courts must consider the
privilege before authorizing discovery. See, e.g., Grandbouche v. Clancy, 825 F.2d 1463, 1466
(10th Cir. 1987) (citing Silkwood v. Kerr-McGee Corp., 563 F.2d 433, 438 (10th Cir. 1977))
(“[W]hen the subject of a discovery order claims a First Amendment privilege not to disclose
certain information, the trial court must conduct a balancing test before ordering disclosure.”).
Only a compelling government interest can overcome such First Amendment rights, and
the mere filing of a lawsuit does not make the identification of a defendant a compelling interest
unless there is good reason to believe that the suit has a legitimate basis. The identification of an
anonymous speaker is a form of relief to the plaintiff (because it can enable extra-judicial selfhelp such as that seen in these mass lawsuits), and it harms the anonymous defendant, who
cannot recover his right of anonymous expression. Relief – an order that benefits the plaintiff
and hurts the defendant – is not customarily given without some proof of wrongdoing.
Of course, the constitutional privilege to remain anonymous is not absolute. Plaintiffs
may properly seek information necessary to pursue meritorious litigation. Accordingly, courts
evaluating attempts to unmask anonymous speakers have adopted standards that balance one
person’s right to speak anonymously with a litigant’s legitimate need to pursue a claim.
In reaching this balance, courts rely on the seminal case of Dendrite Int’l, Inc. v. Doe No.
3, 775 A.2d 756 (N.J. App. 2001). Under Dendrite, a plaintiff must:
1) make reasonable efforts to notify the accused Internet user of the pendency of the
identification proceeding and explain how to present a defense;
2) set forth the exact actions of each Doe defendant that constitute actionable cause;
3) allege all elements of the cause of action and introduce prima facie evidence for each Doe
defendant sufficient to survive a motion for summary judgment; and
7

A court order, even if granted to a private party, is state action and hence subject to
constitutional limitations. See, e.g., New York Times v. Sullivan, 376 U.S. 254, 265 (1964);
Shelley v. Kraemer, 334 U.S. 1, 14 (1948).
17

4) “balance the defendant’s First Amendment right of anonymous free speech against the
strength of the prima facie case presented and the necessity for the disclosure of the
anonymous defendant’s identity to allow the plaintiff to properly proceed.”
Dendrite, 775 A.2d at 760-61.
The Dendrite test most accurately and cogently outlines the important First Amendment
interests of the Doe Defendants and should be applied here.
B.

Plaintiff’s Proposed Discovery Cannot Survive First Amendment Scrutiny.

The Plaintiff fails every element of the Dendrite test.
1.

Plaintiff Has Not Made the Requisite Prima Facie Case.

Critically, Plaintiff has not provided sufficient prima facie evidence that any Defendant
infringed Plaintiff’s exclusive right to reproduce and distribute its copyrighted work. Plaintiff
contends that Defendants “illegally reproduced and distributed Plaintiff’s copyrighted creative
works via the BitTorrent file sharing protocol.” Complaint ¶ 1. However, in support of this
contention, Plaintiff proffers only that by means of an undisclosed “proprietary technology,”
Plaintiff’s agent ”monitored” those “involved in distributing the copyrighted creative works
relevant to Plaintiff’s action.” Declaration of David Pfister in Support of Plaintiff’s Ex Parte
Motion for Leave to Take Discovery Prior to Rule 26(f) Conference (“Pfister Decl.”) ¶ 12.
Plaintiff does not meet its prima facie burden with this meager showing. Indeed, Plaintiff’s
agent even fails to draw the connection between the “proprietary” technology employed and the
2,925 IP addresses identified in Exhibit A to the Complaint.
Instead of the conclusory general showing made to date, Plaintiff must present specific
evidence for each Defendant. At minimum, Plaintiff must present “competent evidence”
regarding the investigative process used to obtain Plaintiff’s proffered allegations about each
Defendant, and competent evidence that would permit Defendants (and the Court) to evaluate the
technology’s reliability and completeness. This information should be available to the Plaintiff;
providing it as part of its prima facie showing would not be unduly burdensome. See Dendrite,
775 A.2d at 772. See also Declaration of Seth Schoen (“Schoen Decl.”) ¶¶ 2, 4-10.

18

Moreover, requiring this showing would be reasonable and consistent with the
requirements set forth by other courts in similar file sharing cases. Those courts have found the
prima facie burden met with the submission of screen shots showing the IP addresses of each
Defendant (so the court can see that the submitted IP addresses match those discovered during
the investigation), copies or real-time capture of the “licensed technologies” used, proof that the
downloaded movie matched Plaintiff’s original film, and shots of the server logs to which the
Plaintiff claims to have had access. See, e.g., Elektra Entm’t Group, Inc. v. Does 1-9, No. 04
Civ. 2289, 2004 WL 2095581, *4 (S.D.N.Y. Sept. 8, 2004).
Without such evidence, the Court must simply accept Plaintiff’s word that its
“proprietary” technology functions in a way that confirms actual copyright infringement, that it
functioned properly in this instance, collected the IP addresses submitted with its complaint and
linked them to an actual infringement of the movie. Given the harm that can come from a false
accusation, the Court should require more.
2.

Defendants’ First Amendment Interests Far Outweigh Plaintiff’s
“Need” for Their Identities.

Even if Plaintiff could satisfy the other steps of the Doe standard required by the First
Amendment, the Court must still “balance the defendant’s First Amendment right of anonymous
free speech against the strength of the prima facie case presented and the necessity for the
disclosure of the anonymous defendant’s identity to allow the plaintiff to properly proceed.”
Dendrite, 775 A.2d at 760-61. Producers of adult content are entitled to the same legal redress as
other copyright holders, but the nature of the material in question necessarily amplifies the risk
of reputational harm resulting from a mistaken identification. Given the myriad procedural
problems outlined above, and the lack of transparency about the means by which the Plaintiff
generated its list of “infringers,” the Court should prevent Plaintiff from taking further shortcuts.
3.

Plaintiff Must Ensure that Defendants Receive Notice of Its Pending
Claim and Its Efforts to Unmask Them.

In addition to the substantive requirements identified above, the First Amendment also
requires that the anonymous Defendants be given adequate notice of the pending action and
19

discovery. Dendrite, 775 A.2d at 760-61. Accordingly, if the Court permits discovery to go
forward, it should require that any subpoena to Internet Service Providers (ISPs) seeking the
identity of anonymous Internet users must be accompanied by a cover notice ordering the ISP:
(a) to notify, within seven days of service of the subpoena, any person whose
information has been sought that such information may be disclosed, and
briefly describe their rights and options; and
(b) to provide sufficient opportunity for the subscriber to exercise those rights,
such as by moving to quash.
To assist the Court, amicus attaches hereto a draft notice based on the procedures issued
by other courts hearing similar cases. See Notice, Ex. 1. Such procedures can help ensure that all
involved have an opportunity to represent their interests.
CONCLUSION
Plaintiff has the right to seek legal redress for alleged copyright infringement, but it must
follow the basic procedures and due process requirements applicable to all civil litigation.
Amicus therefore respectfully urges this Court to vacate its ruling on Plaintiff’s Motion for
Expedited Discovery, quash any outstanding subpoenas already issued by the Plaintiff, and
require Plaintiff to immediately notify their recipients that the subpoenas have been quashed.
Amicus also suggests that the Court dismiss the action sua sponte and require that Plaintiff refile individual cases against individual Defendants in courts that can properly exercise
jurisdiction.
Respectfully submitted,
Dated: March 22, 2011

By /s/ Charles Lee Mudd, Jr.
Charles Lee Mudd Jr.
Mudd Law Offices
3114 West Irving Park Road, Suite 1W
Chicago, Illinois 60618
[phone]
Cook County Attorney No.: 38666
ARDC: 6257957
[e-mail]

20

Julie Samuels
Electronic Frontier Foundation
454 Shotwell St.
San Francisco, CA 94110
[phone]
[e-mail]
James Grimmelmann
Associate Professor
New York Law School
185 West Broadway
New York, NY 10013
[phone]
[e-mail]
Attorneys for Amicus Curiae

21

CERTIFICATE OF SERVICE
I, Charles Lee Mudd, Jr., do hereby certify that service of BRIEF OF AMICUS
CURIAE ELECTRONIC FRONTIER FOUNDATION IN SUPPORT OF
RECONSIDERATION OF THE COURT’S ORDER GRANTING EARLY DISCOVERY
OR, IN THE ALTERNATIVE, OF QUASHING PLAINTIFF’S PRE-COMPLAINT
SUBPOENAS was accomplished pursuant to Electronic Case Filing as to ECF Filing Users and
shall be served upon all other parties listed in the attached Service List by sending said
documents via postage pre-paid U.S. mail on this 22nd day of March 2011.

/s/Charles Lee Mudd, Jr.
Charles Lee Mudd, Jr.

Charles Lee Mudd, Jr.
Mudd Law Offices
3114 W. Irving Park Road
Suite 1W
Chicago, Illinois 60618
773.588.5410 (Telephone)
773.588.5440 (Facsimile)
[e-mail]
ARDC: 6257957

22

SERVICE LIST
All counsel of record are ECF users and no pro se parties have filed appearances of
record.

23