Third Degree Films v. Does 1 - 47

Filing 31

Judge William G. Young: ORDER entered. MEMORANDUM AND ORDER: Does 2-47 are severed from the case and dismissed without prejudice, subject to Third Degree filing individual complaints against them within thirty days of this order. SO ORDERED... (Paine, Matthew)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

THIRD DEGREE FILMS,

v.
DOES 1-47,

)
)
)
Plaintiff, )
)
)
)
)
)
Defendants.)
)

CIVIL ACTION
NO. 12-10761-WGY

MEMORANDUM & ORDER
YOUNG, D.J.
I.

October 2, 2012

INTRODUCTION
In recent months, this Court has grown increasingly troubled

by “copyright trolling,”1 specifically as it has evolved in the
adult film industry.

The Court is not alone in its concern.

Judges, scholars, and journalists alike have noted the recent
trend - indeed, new business model2 - whereby adult film

1

A copyright troll is an owner of a valid copyright who
brings an infringement action “not to be made whole, but rather
as a primary or supplemental revenue stream.” James DeBriyn,
Shedding Light on Copyright Trolls: An Analysis of Mass Copyright
Litigation in the Age of Statutory Damages, 19 UCLA Ent. L. Rev.
79, 86 (2012).
2

See DeBriyn, supra note 1, at 79 (explaining that “[t]o
supplement profits from copyrighted works, copyright holders have
devised a mass-litigation model to monetize, rather than deter,
infringement, . . . utiliz[ing] the threat of outlandish damage
awards to force alleged infringers into quick settlements”);
Christopher M. Swartout, Comment, Toward a Regulatory Model of
Internet Intermediary Liability: File-Sharing and Copyright
Enforcement, 31 Nw. J. Int’l L. & BuS. 499, 509-10 (2011)
1

companies file mass lawsuits against anonymous Doe defendants,
identified only by their IP addresses, alleging that each IP
address reproduced its pornographic film via file sharing
technology in a single swarm, thus infringing the company’s valid
copyright and entitling the company to statutory damages.3
While it is without question that a valid copyright holder
is entitled to seek protection of its intellectual property in
federal court, it appears that in at least some of these cases,
adult film companies may be misusing the subpoena powers of the
court, seeking the identities of the Doe defendants solely to

(describing the “purely profit-driven” “low-cost, high-volume
campaigns to collect settlements from file-sharers”).
3

See, e.g., Digital Sin, Inc. v. Does 1-176, 279 F.R.D.
239, 240 (S.D.N.Y. 2012) (noting the proliferation of these cases
across the country, and expressing concern specifically with the
multitude of “ex parte applications for expedited discovery of
identifying information pertaining to hundreds or thousands of
John Doe defendants”); In re BitTorrent Adult Film Copyright
Infringement Cases, Nos. 11–3995(DRH)(GRB), 12–1147(JS)(GRB),
12–1150(LDW)(GRB), 12–1154(ADS)(GRB), 2012 WL 1570765, at *1
(E.D.N.Y. May 1, 2012) (observing that there has been a
“nationwide blizzard” of such actions and documenting abusive
litigation tactics employed by the adult film company plaintiff
in an apparent attempt to coerce settlement from the Doe
defendants); DeBriyn, supra note 1, at 90-91 (remarking that “the
copyright troll industry has been ‘multiplying like especially
fertile rabbits’ to scour the Internet in the hope of monetizing
copyright infringement” (citation omitted)); Jason Koebler, Porn
Companies File Mass Piracy Lawsuits: Are You At Risk?, U.S. News
and World Report (Feb. 2, 2012),
http://www.usnews.com/news/articles/2012/02/02/porn-companies-fil
e-mass-piracy-lawsuits-are-you-at-risk (estimating that over
220,000 individuals have been sued since mid-2010 for illegally
downloading films, many of them pornographic, via BitTorrent, and
noting that the suits are designed to coerce settlement).
2

facilitate demand letters and coerce settlement, rather than
ultimately serve process and litigate the claims.4

And while it

is true that every defendant to a lawsuit must assess
reputational costs in his or her determination of whether to
settle or defend an action, the potential for embarrassment in
being publicly named as allegedly infringing such salacious works
as “Big Butt Oil Orgy 2” or “Illegal Ass 2,” may be playing a
markedly influential role in encouraging a myriad of Doe
defendants to settle once subpoenas are issued - a bargaining
chip the adult film companies appear to well understand.5

4

For example, in the Eastern District of Virginia, the
court ordered the plaintiff to show cause why sanctions were not
warranted under Federal Rule of Civil Procedure 11 where, after
subpoenaing the Doe defendants’ identifying information from the
Internet Service Providers (“ISPs”), the plaintiff contacted the
defendants with harassing telephone calls, demanding $2,900.00 to
end the litigation, and when any of the defendants filed a motion
to dismiss or sever, the plaintiff voluntarily dismissed the
individual from the litigation rather than allow the merits of
the motion to be heard. Raw Films, Ltd. v. Does 1-32, No.
3:11cv532–JAG, 2011 WL 6182025, at *2 (E.D. Va. Oct. 5, 2011).
The court averred:
This course of conduct indicates that the plaintiffs have
used the offices of the Court as an inexpensive means to
gain the Doe defendants’ personal information and coerce
payment from them.
The plaintiffs seemingly have no
interest in actually litigating the cases, but rather
simply have used the Court and its subpoena powers to
obtain sufficient information to shake down the John
Does.
Id. at *3.
5

See, e.g., SBO Pictures, Inc. v. Does 1-3036, No. 11–4220
SC, 2011 WL 6002620, at *3 (N.D. Cal. Nov. 30, 2011) (expressing
concern that the Doe defendants - “whether guilty of copyright
3

Against this backdrop of mass lawsuits and potentially
abusive litigation tactics, courts nationwide have become
skeptical of allowing the adult film companies unfettered access

infringement or not - would then have to decide whether to pay
money to retain legal assistance to fight the claim that he or
she illegally downloaded sexually explicit materials, or pay the
money demanded[,] . . . [which] creates great potential for a
coercive and unjust ‘settlement’”) (quoting Hard Drive Prods.,
Inc. v. Does 1-30, No. C-11-3826 DMR, 2011 WL 5573960, at *3
(N.D. Cal. Nov. 16, 2011)). The Electronic Frontier Foundation,
a non-profit, member-supported digital civil liberties
organization, submitted an amicus curiae brief in support of an
ISP provider’s motion to quash or modify subpoenas in a similar
mass copyright infringement case, and stated:
While Plaintiffs may not have fully elaborated on
their motives in bringing suit, the invasive, sweeping
manner in which it was brought indicates that they hope
to leverage the risk of public embarrassment to convince
Defendants to quickly capitulate, whether or not they did
anything wrong. A plaintiff’s lawyer in a recent similar
mass porn downloading case has not been shy about telling
the press that he expects defendants there to promptly
settle precisely because many people who are accused of
downloading pornography are unwilling to risk being
publicly identified as having done so. For example, he
recently told the Texas Lawyer: “You have people that
might be OK purchasing music off iTunes, but they’re not
OK letting their wife know that they are purchasing
pornography. . . [.] Most people just call in to settle.
We have a 45 percent settlement rate.” John Council,
Adult Film Company’s Suit Shows Texas is Good for
Copyright Cases, Texas Lawyer, Oct. 4, 2010.
Mot. Elec. Frontier Found. Leave File Amicus Curaie Br. Supp.
Third Party Time Warner Cable’s Mot. Quash Modify Subpoenas, Ex.
1, Mem. Amicus Curiae Elec. Frontier Found. Supp. Third Party
Time Warner Cable’s Mot. Quash Modify Subpoena, at 16, Third
World Media LLV v. Does 1-1243, No. 3:10-cv-0090 (N.D.W.V. Nov.
23, 2010).
4

to the judicial processes of subpoenas and early discovery.6
Furthermore, many courts are eradicating these mass filings on
the ground that joinder of tens, hundreds, and sometimes
thousands of alleged infringers is improper,7 and some have
admonished the plaintiff adult film companies for evading such
substantial court filing fees as they have through the joinder
mechanism.8

Still, a number of courts have upheld the joinder of

6

For example, in the Northern District of California, a
magistrate judge refused to grant expedited discovery to subpoena
the ISP providers for the Doe defendants’ identities after noting
that the adult film company plaintiff conceded that to its
knowledge, neither it nor any other plaintiff had ever served a
single Doe defendant after early discovery had been granted.
Hard Drive Prods., Inc. v. Does 1-90, No. C 11–03825 HRL, 2012 WL
1094653, at *3 & n.4 (N.D. Cal. Mar. 30, 2012). The court
censured the plaintiff, stating “Plaintiff seeks to enlist the
aid of the court to obtain information through the litigation
discovery process so that it can pursue a non-judicial remedy
that focuses on extracting ‘settlement’ payments from persons who
may or may not be infringers. This the court is not willing to
do.” Id. at *7. Here in the District of Massachusetts, Judge
Stearns recently issued an Order to Show Cause in a similar case
as to why the court “should not exercise its discretion under
Rule 21 to sever all of the Doe defendants but one, while
permitting [the plaintiff] to refile against each of the
defendants in separate actions.” New Sensations, Inc. v. Does 1201, No. 12-CV-11720-RGS, 2012 WL 4370864, at *1 (D. Mass. Sept.
21, 2012) (Stearns, J.).
7

See, e.g., Patrick Collins, Inc. v. Does 1-23, No. 11-CV15231, 2012 WL 1019034, at *4 (E.D. Mich. Mar. 26, 2012)
(severing the Doe defendants because the infringement of the film
via BitTorrent did not constitute a “series of transactions or
occurrences” as required under Federal Rule of Civil Procedure
20(a)); SBO Pictures, 2011 WL 6002620, at *3 (same).
8

In In re BitTorrent Adult Film Copyright Infringement
Cases, the magistrate judge estimated that “plaintiffs have
improperly avoided more than $25,000 in filing fees by employing
its swarm joinder theory. . . . Nationwide, these plaintiffs
5

Doe defendants as proper and efficient, issued subpoenas, and
permitted early discovery.9
This Court takes this occasion to address the issue of
whether joinder of Doe defendants who allegedly infringed a
copyrighted film via file sharing technology in a single swarm is
permissive under Federal Rule of Civil Procedure 20(a), and, if
so, whether any protective measures ought be taken by the Court
pursuant to its broad discretion under Federal Rule of Civil
Procedure 20(b).
II.

ANALYSIS
A.

Procedural Posture

On April 28, 2012, Third Degree Films, Inc. (“Third Degree”)
sued forty-seven Doe defendants, identified only by their IP
addresses.

Compl. Copyright Infringement (“Compl.”), ECF No. 1.

Two days later, Third Degree filed an emergency motion for
expedited discovery, seeking to subpoena the respective Internet
Service Providers (“ISPs”) to obtain the Doe defendants’ personal

have availed themselves of the resources of the court system on a
scale rarely seen. It seems improper that they should profit
without paying statutorily required fees.” 2012 WL 1570765, at
*13.
9

See, e.g., Patrick Collins, Inc. v. Does 1-39, No. 12-CV00096-AW, 2012 WL 1432224, at *3 (D. Md. Apr. 24, 2012) (holding
that joinder was proper, as the adult film company plaintiff had
demonstrated a logical relationship between the series of
individual downloads of the film via BitTorrent, and denying
motion to quash the subpoena); First Time Videos, LLC v. Does 176, 276 F.R.D. 254, 257 (N.D. Ill. 2011) (same).
6

identifying information.
Disc., ECF No. 3.

Pl.’s Emergency Ex-Parte Mot. Early

This Court granted the motion and issued a

modified order, instructing the ISPs to notify the subscribers of
the subpoena, allow them thirty days from the date of notice to
move to quash or vacate the subpoena, and then disclose the
subpoenaed information to Third Degree.

Order Granting Pl.’s

Emergency Ex-Parte Mot. Early Discovery, ECF No. 7.
Subsequently, several Doe defendants moved to quash the
subpoena, sever the defendants, or dismiss the action.

Def. Doe

No. 44’s Mot. Quash (“Doe 44’s Mot.”), ECF No. 8; Mot. Quash &
Mem. Supp. Mot. (“Doe 19’s Mot.”), ECF No. 9; Mot. Doe 10 Sever
Dismiss Alt. Objection Inspection Mot. Quash (“Doe 10’s Mot.”),
ECF No. 10; Def. Doe 34’s Mot. Quash, Issuance Protective Order,
Dismiss Compl., Incorporated Mem. Law (“Doe 34’s Mot.”), ECF No.
13; Doe 12’s Mot. Sever & Dismiss, Alt., Mot Quash Subpoena (“Doe
12’s Mot.”), ECF No. 16; Consol. Mot. Quash Subpoena Pursuant
FRCP 45, Alt., Mot. Sever Pursuant FRCP 21 (“Doe 22’s Mot.”), ECF
No. 18.
motions.

Third Degree filed opposition briefs to the various
Opp’n (ECF No. 9) Doe’s Mot. Quash, ECF No. 19; Opp’n

(ECF No. 8) Doe’s Mot. Quash, ECF No. 20; Opp’n (ECF No. 10 & 16)
Mots. Sever, Dismiss, Alt. Mot. Quash Subpoena (“Pl.’s Opp’n
Br.”), ECF No. 21; Opp’n (ECF No. 13) Doe’s Mot. Quash, Issuance
Protective Order, Dismiss Compl., ECF No. 22; Opp’n (ECF No. 18)
Doe’s Mot. Quash Sever, ECF No. 24.

7

Third Degree has notified the Court of dismissal with
prejudice of the following Doe defendants to date: Doe 8, Doe 13,
Doe 14, Doe 23, Doe 26, Doe 30, Doe 36, Doe 39, Doe 43 and Doe
46.

Dismissal Prejudice Specific Does, ECF Nos. 25, 26, 27, 30.

On September 7, 2012, Third Degree moved for a 120-day extension
to serve the now-identified defendants with a complaint and
summons.
B.

Pl.’s Mot. Enlargement Time Service, ECF No. 28.
Facts as Alleged

Third Degree produced and owns a valid copyright to the
adult film, “MILF Wars: Lisa Ann Vs. Julia Ann” (the “Film”).
Compl. ¶ 8.

Without Third Degree’s authorization, Does 1-47

reproduced and distributed to the public at least a substantial
portion of the Film using the BitTorrent file transfer protocol
(“BitTorrent”).

Id. ¶ 19.

As this Court previously described in Liberty Media
Holdings, LLC v. Swarm Sharing Hash File
AE340D0560129AFEE8D78CE07F2394C7 B5BC9C05,
BitTorrent is a peer-to-peer file-sharing protocol
used for the distribution and sharing of data over the
Internet, including files containing digital versions of
motion pictures.
BitTorrent is different from
traditional peer-to-peer networks in that it organizes
all users who wish to download a particular file into a
collective distribution network, known as a “swarm.”
Being part of a swarm allows users to simultaneously
download and upload pieces of the media file from each
other, rather than download the entire file from a single
source.
File sharing through the BitTorrent network begins
with a single individual, often referred to as a “seed”
user or “seeder,” who intentionally chooses to share a
8

particular file with a BitTorrent swarm. The original
file in this case contains the entire Motion Picture.
Once the file has been shared by the seed user, other
members of the swarm can download the original file,
which creates an exact digital copy on the computers of
the downloading users. Each user requesting to download
the file becomes a member of the swarm and consequently
receives pieces of the original file. Eventually, the
entire file is broken into pieces and distributed to
various members of the swarm who may then “reassemble”
the file by exchanging pieces with one another. Once a
piece of the file is downloaded, it is immediately made
available for distribution to other users seeking to
download the file, subsequently turning each downloader
into an uploader.
This sequence leads to the “rapid
viral sharing” of the file.
[The Doe defendants] collectively participated in a
peer-to-peer swarm to download, copy, and distribute the
Motion Picture file . . . .
After searching for and
obtaining
a
torrent
file
containing
information
sufficient to locate and download the Motion Picture,
each defendant opened the torrent file using a BitTorrent
client application that was specifically developed to
read such files. [The Doe defendants] then traded pieces
of the file containing a digital copy of the Motion
Picture with each other until each user had a partial or
complete copy of the Motion Picture on his or her
computer.
Each defendant owns or has control of a
computer that contained (and possibly still contains) a
torrent file identifying the Motion Picture, as well as
a partial or complete copy of the Motion Picture itself.
821 F. Supp. 2d 444, 448 (D. Mass. 2011) (citations omitted).
C.

Permissive Joinder of Defendants

This Court previously has confronted the issue of whether
joinder of tens of Doe defendants is permissive in an
infringement action alleging the use of BitTorrent file sharing
technology to redistribute a copyrighted adult film.

Last year,

in Liberty Media, 821 F. Supp. 2d at 451-52, the Court rejected
the Doe defendants’ argument that joinder was improper and held

9

that the swarm participants could be permissively joined under
Rule 20.10

The Court acknowledged that post-discovery, certain

defendants might raise factual distinctions meriting severance of
their claims, but maintained that the defendants were properly
joined at the early stages of litigation until such distinctions
arose.

Id. at 451 n.6.

Since its decision was issued in Liberty Media, this Court
has entertained a profusion of filings in the mass copyright
infringement cases on its docket.

Upon further reflection and a

deeper understanding of the policy concerns at play, the Court
now revisits and amends its holding in Liberty Media.

The Court

continues to maintain that joinder is technically proper under
Rule 20(a).

The Court now holds, however, that in light of its

serious concerns regarding prejudice to the defendants as a
result of joinder, it ought exercise the broad discretion granted
it under Rule 20(b) and sever the Doe defendants in this action
and in similar actions before this Court.
1.

Permissive Joinder Under Federal Rule of Civil
Procedure 20(a)

Federal Rule of Civil Procedure 20(a)(2) provides that
defendants may be joined in a single action if “any right to
10

As noted by the
permissive joinder was
their motion to quash,
Supp. 2d 451 n.5. The
went on to analyze and
joinder argument. Id.

Court in Liberty Media, the issue of
raised improperly by the defendants in
rather than in a motion to sever. 821 F.
Court noted this procedural defect, but
reject the merits of the defendants’
10

relief is asserted against them . . . arising out of the same
transaction, occurrence, or series of transactions or
occurrences,” Fed. R. Civ. P. 20(a)(2)(A), and “a question of law
or fact common to all defendants will arise,” id. 20(a)(2)(B).
The majority of courts holding that joinder is improper in like
cases have held so on the basis that the allegations do not arise
out of the same transaction, occurrence, or series of
transactions or occurrences.

See, e.g., Patrick Collins, Inc. v.

Does 1-23, No. JFM 8:12–cv–00087, 2012 WL 1144918, at *6 (D. Md.
Apr. 4, 2012) (holding that joinder was improper under Rule
20(a)(2)(B) because “the alleged infringement was committed by
unrelated defendants, through independent actions, at different
times and locations”); Liberty Media Holdings LLC v. BitTorrent
Swarm, 277 F.R.D. 672, 675 (S.D. Fla. 2011) (holding that joinder
was improper under Rule 20(a)(2)(B) because the alleged
infringement occurred on different days and at different times
during a two-week period, and noting that even if the
infringement did occur at the same time, “due to the
decentralized operation of BitTorrent, this fact alone would not
imply that Defendants participated in or contributed to the
downloading of each other’s copies of the work at issue”
(internal quotation marks and citation omitted)); Hard Drive
Prods., Inc. v. Does 1-188, 809 F. Supp. 2d 1150, 1163 (N.D. Cal.
2011) (holding that joinder was improper under Rule 20(a)(2)(B)

11

because “[u]nder the BitTorrent Protocol, it is not necessary
that each of the [Doe defendants] participated in or contributed
to the downloading of each other’s copies of the work at issue or even participated in or contributed to the downloading by any
of the [Doe defendants]”).

The moving Doe defendants in the

instant case similarly argue that joinder is improper under Rule
20(a)(2)(B).

Doe 22’s Mot. 3; Doe 10’s Mot. 2; Doe 34’s Mot. 7.

In Liberty Media, this Court concluded - albeit in a rather
summary fashion - that the Doe defendants’ alleged behavior
satisfied the “same transaction or occurrence” requirement,
relying on Liberty Media’s assertion that “a BitTorrent swarm is
a collective enterprise where each downloader is also an
uploader, and where a group of uploaders collaborate to speed the
completion of each download of the file.”
(citation omitted).

821 F. Supp. 2d at 451

After considering the case law submitted by

the parties in this case, the Court continues to hold that Doe
defendants alleged to infringe a film in a single BitTorrent
swarm meet the “same transaction or occurrence” requirement of
Rule 20(a).
The Court is instructed by a recent Federal Circuit decision
in a patent infringement case, which articulates a useful
standard for whether joinder is proper under Rule 20(a)(2)(B).
In In re EMC Corp., 677 F.3d 1351, 1356 (Fed. Cir. 2012), the
court began by noting that joinder is permissive even for

12

independent actors who are not sued on a theory of joint
liability.

The court found guidance for the “same transaction or

occurrence” requirement of Rule 20(a)(2)(B) in the jurisprudence
on Rule 13(a) for compulsory counterclaims, in which courts have
construed similar language to the “same transaction or
occurrence” requirement of Rule 20(a)(2)(B) as requiring a
“logical relationship” between the claims.

Id. at 1357-58

(citing the Eighth and Eleventh Circuits, which have also
extended the “logical relationship” test of Rule 13(a) to Rule
20(a)).

The Federal Circuit asserted that the logical

relationship test would be satisfied in the joinder context where
there was “substantial evidentiary overlap in the facts giving
rise to the cause of action of each defendant,” id. at 1358; put
another way, “the defendants’ alleged infringing acts, which give
rise to the individual claims of infringement, must share an
aggregate of operative facts.”

Id.

In Third Degree Films v. Does 1-36, No. 11-cv-15200, 2012 WL
2522151 (E.D. Mich. May 29, 2012), a magistrate judge
persuasively applied the In re EMC Corp. standard to the alleged
infringement of an adult film by individuals in a single
BitTorrent swarm.

The court issued an opinion and order denying

a motion to sever the Doe defendants, framing the issue as
“whether Plaintiff has sufficiently pled that each defendant’s
act of infringement - downloading and uploading pieces of a

13

digital version of the [film] - share ‘an aggregate of operative
facts . . . .’”
1351).

Id. at *6 (citing In re EMC Corp., 677 F.3d at

The court held that the Plaintiff had met its burden in

this regard, at least at the early stages of litigation.

Id. at

*7.
The court acknowledged the “substantial merit” of the
counter-position to its holding - indeed, the position of some of
the Doe defendants in this case - that because a single swarm is
comprised of thousands of peers, and because the transmissions by
the Doe defendants occurred over a period of several weeks, it is
possible - perhaps likely - that a particular Doe defendant did
not upload to or download directly from any of the other Doe
defendants named in the complaint.

Id. at *8.

But the Does 1-36 court was persuaded - as is this Court by the “equally weighty contrary case law” which holds that the
plausible indirect interactions between the named Doe defendants
constitute “shared, overlapping facts” which suffice to establish
a “series of transactions or occurrences.”11

11

Id. at *8-9; see

It gives this Court pause that district courts are so
divided over whether file sharing via the BitTorrent protocol
constitutes a “series of transactions or occurrences” in
satisfaction of Rule 20(a)(2)(B). The inquiry is so factintensive, and the BitTorrent protocol so technologically
complex, that no principled conclusions have emerged from the
abundance of recent case law and this Court is not entirely
comfortable hanging its hat on its own understanding of the
process. Yet, cognizant of the oft-quoted averment of the
Supreme Court that “the impulse is toward entertaining the
broadest possible scope of action consistent with fairness to the
14

also, e.g., Hanley v. First Investors Corp., 151 F.R.D. 76, 79
(E.D. Tex. 1993) (“Imagine a number of ‘transactions or
occurrences’ spread out through time and place.

They are not

directly continuous, or else they would constitute one
transaction or occurrence rather than a number of them.
would make them a ‘series?’

What

The answer is some connection or

logical relationship between the various transactions or
occurrences.”).

The Does 1-36 court explained:

it is important to consider that while a peer directly
uploads to only a small number of peers, those peers in
turn upload pieces to other peers that later join the
swarm. Thus, a defendant’s “generation” of peers - peers
that a defendant likely directly uploaded to - helped
pass on pieces of the Work to the next “generation” of
active peers. For example, it is not implausible that
John Doe No. 10, who apparently participated in the swarm
on July 18, 2011, shared pieces of the Work with peers
that in turn, helped propagate the Work to later joining
peers.
Therefore, Doe No. 10 plausibly indirectly
uploaded pieces of the work to, say, Doe No. 25 who
participated in the swarm four days later. Indeed, it is
beyond dispute that the initial seeder indirectly
uploaded pieces of the Work to every peer in the swarm —
no matter when they joined.
Id. (citing Patrick Collins, Inc. v. Does 1-21, No. 11-15232,
2012 WL 11908040, at *5 (E.D. Mich. Apr. 5, 2012).

The court

held, and this Court concurs, that the allegations of

parties,” United Mine Workers of Am. v. Gibbs, 383 U.S. 715, 724
(U.S. 1966), the Court holds that the interaction of the Doe
defendants via BitTorrent - even if indirect - is significant
enough to bring them within the broad scope of permissibly joined
parties under Rule 20(a). Instead, the Court grounds its
determination to sever the Doe defendants in this action and like
actions on a basis squarely within the Court’s expertise:
fundamental fairness and justice to all parties.
15

infringement via BitTorrent swarm plead more than simply that the
Doe defendants “committed the exact same violation of the law in
exactly the same way,” id. (internal quotation marks and citation
omitted), but rather that the Doe defendants plausibly infringed
the Film through a series of transactions or occurrences.

See

also, e.g., Patrick Collins, Inc. v. Does 1-39, No. 12-CV-00096AW, 2012 WL 1432224, at *3 (D. Md. Apr. 24, 2012) (“Although the
downloads in this case occurred over a span of around three
months, suggesting that the Does were not downloading the
copyrighted movie at the exact same time, Plaintiff has
adequately alleged that each download directly facilitated the
others in such a way that the entire series of transactions would
have been different but for each of Defendants’ infringements.”);
Digital Sin, Inc. v. Does 1-176, 279 F.R.D. 239, 244 (S.D.N.Y.
2012) (“[I]t is difficult to see how the sharing and downloading
activity alleged in the Complaint - a series of individuals
connecting either directly with each other or as part of a chain
or ‘swarm’ of connectivity designed to illegally copy and share
the exact same copyrighted file - could not constitute a ‘series
of transactions or occurrences’ for purposes of Rule 20(a).”).
The Court also continues to hold that allegations of
infringement through the use of BitTorrent file sharing
technology meet the first prong of Rule 20(a)(2) requiring common
questions of law or fact.

As the Court explained in Liberty

16

Media, common questions of law exist in that the allegations
asserted against the Doe defendants are identical, and common
questions of fact exist as to the method of infringement using
BitTorrent.

821 F. Supp. 2d at 451; see also Does 1-36, 2012 WL

2522151, at *4 (“Plaintiff has alleged the same legal causes of
action involving the same digital file against each of the
defendants.

Plaintiff has also alleged that the same

investigation led to the discovery of the IP addresses allegedly
associated with Defendants.” (citations omitted)).

The moving

Doe defendants in this case do not contest that the common
question of law or fact requirement is satisfied, and the Court
will not belabor the point.
2.

Protective Measures Under Federal Rule of Civil
Procedure 20(b)

While the Court holds that joinder is permissive under Rule
20(a), analysis does not end there.

Under Federal Rule of Civil

Procedure 20(b) (“Rule 20(b)”), entitled “Protective Measures,”
the Court has broad discretion to “issue orders - including an
order for separate trials - to protect a party against
embarrassment, delay, expense, or other prejudice.”
P. 20(b).

Fed. R. Civ.

As noted in the Introduction, the Court has serious

concerns regarding the propriety of joinder of tens, hundreds, or
thousands of Doe defendants in these adult film mass copyright
infringement cases.

17

The purpose of permissive joinder of parties is “to promote
trial convenience and expedite the final determination of
disputes.”

7 Charles Alan Wright et al., 7 Federal Practice and

Procedure § 1652 (3d ed. 2012).

In each of its opposition

briefs, Third Degree argues that joinder of the Doe defendants
would promote judicial efficiency, and ought therefore be
permitted.

See, e.g., Pl.’s Opp’n Br. 9.

Yet the joinder of

forty-seven defendants, each of whom may raise different factual
and legal defenses to Third Degree’s claims, is contrary to those
stated ends.

As one court contemplated,

Comcast subscriber John Doe 1 could be an innocent parent
whose internet access was abused by her minor child,
while John Doe 2 might share a computer with a roommate
who infringed Plaintiffs’ works. John Does 3 through 203
could be thieves, just as Plaintiffs believe, inexcusably
pilfering Plaintiffs’ property and depriving them, and
their artists, of the royalties they are rightly
owed. . . .
Wholesale litigation of these claims is
inappropriate, at least with respect to a vast majority
(if not all) of Defendants. Joinder is improper.
BMG Music v. Does 1-203, No. Civ.A 04-650, 2004 WL 953888, at *1
(E.D. Pa. Apr. 2, 2004).

Even in the infancy of this action, it

is clear that the Doe defendants will raise disparate defenses.
For example, Doe 34 has indicated that she is a single thirtynine year-old professional woman employed in a senior position in
the financial industry, and owns a two-family home, residing in
one unit and renting out the other unit.

Doe 34’s Mot. 3.

She

denied ever having downloaded or viewed the Film, but indicated
that she provides wireless Internet for the tenants in the
18

adjacent unit.

Id. at 4.

Doe 5 has asserted that the infringing

IP address identified on the notice is not Doe 5’s IP address,
and argues that any such download was through a “‘jacked or
bootlegged connection’ to the ISP network.”

Mot. Extension Time

Obtain Legal Legal [sic] Counsel 1, ECF No. 23.

Doe 10 denies

that he/she, or anyone in the household, downloaded the Film.
Doe 10’s Mot. 2.
While it is true that there is factual overlap regarding the
Doe defendants’ alleged method of infringement via BitTorrent, it
is evident that the crux of the cases, should they proceed to
trial, will be the individual factual claims of each defendant.
As the court aptly described in CineTel Films, Inc. v. Does 11,052,
To maintain any sense of fairness, each individual
defendant would have to receive a mini-trial, involving
different evidence and testimony. The enormous burden of
a trial like this “completely defeat[s] any supposed
benefit from the joinder of all Does . . . and would
substantially prejudice defendants and the administration
of justice.”
853 F. Supp. 2d 545, 554 (D. Md. 2012) (citing Hard Drive Prods.,
809 F. Supp. 2d at 1164); see also On the Cheap LLC v. Does 15011, 280 F.R.D. 500, 503 (N.D. Cal. 2011) (“Because the large
number of defendants with individual issues will create ‘scores
of mini-trials involving different evidence and testimony’ and
complicate the issues for all those involved, it is more
efficient to proceed with separate cases where there will be

19

separate proceedings, including separate motion hearings and ADR
efforts.” (citation omitted)).

The Court simply cannot see how

it “promote[s] trial convenience” to hold forty-seven mini-trials
and ask one jury to make findings as to each of them.
The Court further agrees with the reasoning in Pacific
Century Int’l, Ltd. v. Does 1-101 that joinder of the Doe
defendants would transform what “appears to be a relatively
straightforward case” into “a cumbersome procedural albatross.”
No. C–11–02533 (DMR), 2011 WL 5117424, at *3 (N.D. Cal. Oct. 27,
2011).

The court explained:

To provide two illustrative examples, each Defendant
would have the right to be present at every other
Defendant’s depositions — a thoroughly unmanageable and
expensive ordeal. Similarly, pro se Defendants, who most
likely would not e-file, would be required to serve every
other Defendant with a copy of their pleadings and other
submissions throughout the pendency of the action at
substantial cost.
Id.
To the extent that case management may be more efficient at
certain stages of the litigation were the defendants in a single
action, the Court retains discretion under Federal Rule of Civil
Procedure 42(a) to consolidate any or all of the matters for some
portion of the process.

Fed. R. Civ. P. 42(a).

Thus, the Court

may consolidate the cases for purposes of discovery or early
motion practice.

See id.

Moreover, if it appears that the

method of infringement via BitTorrent protocol is largely
uncontested, perhaps that matter might be stipulated.
20

Alternatively, the Court could join the defendants and try that
limited issue before a jury and then, applying the principles of
issue preclusion, use the jury’s finding in the separate trials
of each defendant.

Thus, joinder is not the only procedural

mechanism by which the Court efficiently can administer these
cases; indeed, it may create significant inefficiencies.

In

light of the Court’s reservations regarding the prejudicial
effect of joinder at the action’s inception, the Court declines
to permit joinder of the Doe defendants, and will instead
consolidate the independent actions to the extent necessary.
Moreover, this Court is concerned that the joinder mechanism
is being manipulated to facilitate a low-cost, low-risk revenue
model for the adult film companies.

See Christopher M. Swartout,

Comment, Toward a Regulatory Model of Internet Intermediary
Liability: File-Sharing and Copyright Enforcement, 31 Nw. J.
Int’l L. & Bus. 499, 509-10 (2011) (describing the “purely
profit-driven” “low-cost, high-volume campaigns to collect
settlements from file-sharers”).

Third Degree and like companies

file a single cookie-cutter complaint alleging copyright
infringement against tens, hundreds or thousands of individuals
based on their IP addresses, paying only a single $350.00 filing
fee, and likely employing a contingency fee structure.

See James

DeBriyn, Shedding Light on Copyright Trolls: An Analysis of Mass
Copyright Litigation in the Age of Statutory Damages, 19 UCLA

21

Ent. L. Rev. 79, 91 (2012) (noting that in these cases, the
contingency fee structure is reversed so that the law firm keeps
70 percent, and explaining that this structure allows copyright
holders to “monetize peer-to-peer (P2P) activity and realize
revenues from an unexpected source - Internet piracy” (citation
omitted)).
The company then moves for early discovery, subpoenas the
Doe defendants’ identifying information from the ISPs, and sends
the defendants settlement demand letters.

Id. at 95-96.

The

company relies on the combined threat of substantial statutory
damages and the embarrassment of being publicly named as
illegally downloading a pornographic film (not to mention the
pressure applied by the knowledge that co-defendants are
settling), to assume that at least some of the defendants will
settle for perhaps $2,000.00 or $3,000.00 - which result comes at
minimal cost to the company.

See id. at 98-99.

Other courts have noted the same pattern and expressed
similar misgiving.

In SBO Pictures, Inc. v. Does 1-3036, the

court explained:
Indeed, the Court is concerned that Plaintiff’s
motive for seeking joinder of over three thousand Doe
Defendants in one action may be . . . to coerce
. . . settlements. As Plaintiff’s counsel surely knows,
trial of a suit with thousands of individual defendants
would present unmanageable difficulties.
The vast
majority of these mass copyright infringement suits are
resolved through settlement once the plaintiff secures
the information identifying the Does. . . . However,
“while the courts favor settlements, filing one mass
22

action in order to identify hundreds of doe defendants
through pre-service discovery and facilitate mass
settlement, is not what the joinder rules were
established for.”
No. 11-4420 SC, 2011 WL 6002620, at *3-4 (N.D. Cal. Nov. 30,
2011) (citing

Patrick Collins, Inc. v. Does 1–3757, No. C

10–05886 LB, 2011 WL 5368874, at *2 (N.D. Cal. Nov. 4, 2011)
(other citations omitted) (internal quotation marks omitted)).
In In re BitTorrent Adult Film Copyright Infringement Cases,
the court averred that “[o]ur federal court system provides
litigants with some of the finest tools available to assist in
resolving disputes; the courts should not, however, permit those
tools to be used as a bludgeon.”

Nos. 11–3995(DRH)(GRB),

12–1147(JS)(GRB), 12–1150(LDW)(GRB), 12–1154(ADS)(GRB), 2012 WL
1570765, at *10 (E.D.N.Y. May 1, 2012)

This Court is in complete

agreement.
This Court is ever mindful of the mandate of Federal Rule of
Civil Procedure 1, that the Federal Rules of Civil Procedure
ought be “administered to secure the just, speedy, and
inexpensive determination of every action.”

Fed. R. Civ. P. 1.

Indeed, this Court zealously encourages all parties in actions
pending before it to reach settlement if possible, as private
resolution is frequently the most just and cost-effective result.
See Philip W. Tone, The Role of the Judge in the Settlement
Process, Fed. Judicial Ctr., Seminars for Newly Appointed United
States District Judges 57, 60 (West 1975).
23

Yet, it is precisely when private resolution is intimated to
be unjust that this Court’s role shifts from encouraging such an
agreement to protecting against it.

See In re Relafen Antitrust

Litigation, 231 F.R.D. 52, 57-58 (D. Mass. 2005).

As the court

asserted in Third Degree Films, Inc. v. Does 1-108, No. DKC 113007, 2012 WL 1514807 (D. Md. Apr. 27, 2012), “the risk of
extortionate settlements is too great to ignore, especially when
joinder is being used to that end.”

Id. at *4.

To be clear, the

Court has not observed any specific bad faith behavior in this
case by Third Degree to date,12 as has occurred in other cases.
Cf. Raw Films, Ltd. v. Does 1-32, No. 3:11cv532–JAG, 2011 WL
6182025, at *2 (E.D. Va. Oct. 5, 2011) (noting that the plaintiff
contacted the defendants with harassing telephone calls,
demanding $2,900.00 to end the litigation, and when any of the
defendants filed a motion to dismiss or sever, the plaintiff
voluntarily dismissed the individual from the litigation).
Rather, the Court takes issue with the general structure of this

12

The Doe defendants argue that Third Degree is engaged in
improper and abusive litigation tactics, see, e.g., Doe 12’s Mot.
2, but raise no specific examples in this regard. The Court
takes judicial notice of a purported class action pending against
Third Degree and four other adult film companies alleging, inter
alia, that its actions in similar mass copyright infringement
suits cause it to be liable for violations of the Racketeer
Influenced and Corrupt Organizations (“RICO”) Act, intentional
infliction of emotional distress, and fraud. See Compl. with
Class Allegations Jury Demand as to All Counts 6, Barker v.
Patrick Collins, Inc., No. 3-12-cv-372-S (W.D. Ky. July 5, 2012).
24

case13 and like cases, and has determined that the most
appropriate method to protect against any potential coercion is
to sever the Doe defendants and require them to be sued
individually.
Requiring Third Degree to sue the defendants separately
serves several purposes.

First, it compels Third Degree to pay a

$350.00 filing fee for each defendant, a statutory requirement
under 28 U.S.C. § 1914(a) that serves “two salutary purposes.
First, it is a revenue raising measure. . . .

Second, § 1914(a)

acts as a threshold barrier, albeit a modest one, against the
filing of frivolous or otherwise meritless lawsuits.”
Drugs, 325 F. Supp. 2d 540, 541 (E.D. Pa. 2004).

In re Diet

A magistrate

judge recently reprimanded a plaintiff adult film company for
evading more than $25,000.00 in filing fees by suing thousands of
defendant Does in four actions, and noted the incentive for the
plaintiff to bring these suits en masse where a single filing fee
might result in a flurry of settlement agreements.

13

In re

Although the instant case names only forty-seven Doe
defendants, as opposed to hundreds or thousands of defendants
sued in some of the cited cases, Third Degree currently has
identical cases pending for infringement of one of three adult
films (“MILF Wars: Lisa Ann Vs. Julia Ann,” “Illegal Ass 2,” or
“Big Butt Oil Orgy 2”) against a total of 238 individuals in the
District of Massachusetts, 164 individuals in the District of
Maryland, and 615 individuals in the Southern District of New
York, for a total of 1,017 Doe defendants in 13 actions in just
three districts. While Third Degree admittedly is no longer
suing as many individuals in a single action, there are still an
alarming number of defendants pending.
25

BitTorrent Adult Film Copyright Infringement Cases, 2012 WL
1570765, at *12-13.

Requiring Third Degree to pay a filing fee

for each defendant may help ensure Third Degree is suing the Doe
defendants for a good faith reason, that is, to protect its
copyright and litigate its claim, rather than obtain the
defendants’ information and coerce settlement with no intent of
employing the rest of the judicial process.

Moreover, as

discussed above, severing the defendants will promote fairness
and efficiency in trial administration.
The Court acknowledges without reservation Third Degree’s
right to assert copyright protection of the Film and to sue
individuals who infringe on its intellectual property.

But after

a careful weighing of the balance of potential injustices in this
case and like cases, the Court determines that any efficiency
gains and cost benefits to Third Degree from joining the Doe
defendants in a single action are substantially outweighed by the
fairness concerns and inefficiencies at trial, the potential
prejudice from what seems to be a developing pattern of
extortionate settlement demands, and the evasion of thousands of
dollars of filing fees.

26

III. CONCLUSION
For the foregoing reasons, Does 2-47 are severed from the
case and dismissed without prejudice, subject to Third Degree
filing individual complaints against them within thirty days of
this order.14
SO ORDERED.

/s/ William G. Young
WILLIAM G. YOUNG
DISTRICT JUDGE

14

This order excepts the following Does, who already have
been dismissed with prejudice: Doe 8, Doe 13, Doe 14, Doe 23, Doe
26, Doe 30, Doe 36, Doe 39, Doe 43, and Doe 46.
27