Discount Video Center, Inc. v. Does 1 - 29

Filing 51

Ch. Magistrate Judge Leo T. Sorokin: ORDER entered. Order on Pending Motions for Ex Parte Discovery and Order to Show Cause. For the foregoing reasons, the Plaintiffs' Renewed Motions for Ex Parte Discovery (12-cv-10805-NMG, Docket # 43; 12-cv- 10532-GAO, Docket # 43; and, 12-cv-10758-GAO, Docket # 37) are DENIED. It is further ORDERED that by the close of business on November 16, 2012, the Plaintiffs shall show cause why their cases should not be dismissed pursuant to Fed. R. Civ. P. 4(m) for failure to effect timely service. See attached Order. (Chernetsky, James)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

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DISCOUNT VIDEO CENTER, INC.,
Plaintiff,
v.
DOES 1-29, et al.,
Defendants.

PATRICK COLLINS, INC.,
Plaintiff,
v.
DOES 1-79,
Defendants.

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Civil Action No. 12-10805-NMG

Civil Action No. 12-10532-GAO

(Continued on next page)

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PATRICK COLLINS, INC.,
Plaintiff,
v.
DOES 1-36,
Defendants.

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Civil Action No. 12-10758-GAO

ORDER ON PENDING MOTIONS FOR EX PARTE DISCOVERY
AND ORDER TO SHOW CAUSE
November 7, 2012
SOROKIN, C.M.J.
Pending before the Court are the Plaintiffs’ requests for ex parte discovery prior to
service of the Complaints (12-cv-10805-NMG, Docket # 43; 12-cv-10532-GAO, Docket # 43;
and, 12-cv-10758-GAO, Docket # 37). For the reasons set forth below, these motions are
DENIED.
The Plaintiffs in these three cases (who are each represented by the same counsel) have
filed Renewed Motions for Early Discovery. Previously, for the reasons stated in the Court’s
Memorandum and Order on Motions to Quash (12-cv-10805-NMG, Docket # 31), the Court
indicated that the Plaintiffs could invoke the Court’s authority to undertake limited early
discovery pursuant to the Federal Rules of Civil Procedure for the purpose of ascertaining the
identities of the John Doe Defendants named in the Complaints. See Id. at 3-4. The law
applicable to these cases has not changed. However, in the circumstances of these cases (each
considered individually), the Court DENIES the motion for early discovery.

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On October 12, 2012, the Court conducted a lengthy hearing on the motions in all three
cases. Several matters became clear to the Court, based upon the Plaintiffs’ counsel’s statements
and the record of the litigation in these cases. Ordinarily, a Plaintiff suing a John Doe Defendant
would seek narrow discovery ex parte in order to identify the Doe Defendant for purposes of
filing a motion to amend the Complaint to name the Doe, followed by service of the Complaint.
The Plaintiffs in these cases evidence no interest in such a pursuit. They have not proposed a
discovery plan aimed at identifying the infringers they have sued.1 Rather, the Plaintiffs request
that the Court order disclosure of the third-party subscribers’ names so that the Plaintiffs might
settle or dismiss their cases on an informal basis. The discovery they seek cannot provide the
Plaintiffs with sufficient information to identify the Doe Defendants. Nor have the Plaintiffs
requested leave in their submissions to take depositions, either orally or upon written questions –
the only discovery mechanism available to Plaintiff under the Federal Rules of Civil Procedure
when seeking information from third parties, as is the case here. In light of the Plaintiffs’
counsel’s assertion at the July 30, 2012 hearing that it was prepared to take depositions (see, 12cv-10805-NMG, Docket # 23 at 48) and in light of his concession that depositions were the only
available discovery mechanism (id. at 47), the omission of any written request for depositions in
the Plaintiffs’ renewed motions for discovery speaks volumes about the Plaintiffs’ lack of
1

For example, the Plaintiffs ask for the MAC address of the subscriber from the Internet
Service Provider. The MAC address is the unique ID for any piece of networking hardware such
as a cable modem, wireless router, or the network interface card a computer uses to connect to a
network. The Plaintiffs’ counsel, however, conceded at the hearing that the MAC address is
helpful “not for amending the complaint, no. For the merits of the case.” See Transcript of
October 12, 2012 Hearing at 16 (12-cv-10805-NMG, Docket # 49). Because counsel could not
explain the reason for the request to subpoena this information, the Court gave counsel the
opportunity to consult his clients or experts. The written explanation subsequently provided fails
to indicate how possessing the MAC address would assist the Plaintiffs in identifying the
infringer. See 12-cv-10805-NMG, Docket # 48.
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interest in actually litigating these cases. That the Plaintiffs’ counsel now assert a willingness to
take depositions if that is the only option (see 12-cv-10805-NMG, Docket # 48 at 2) only
confirms that the Plaintiffs’ interest in litigating the cases, or in following the governing law,
arises only in response to the Court’s express command.
Not only have Plaintiffs failed to articulate a discovery plan that would lead to
identifying the infringers they have sued, but the Plaintiffs cannot even articulate the specific
information they need or require in order to identify the infringers (or, to determine that such
identification is not reasonably possible).
The Court:

So then what information – what do you need to know – what
do you need to acquire in order to be in the position to file a
motion to amend your complaint substituting an actual person
for any particular Doe?

Mr. Cable:

Well, I don’t think there is a specific set of information we
need. I think there’s a principle that is behind it. I think we
need a good-faith basis to amend the complaint, and that can
come in many ways.

12-cv-10805-NMG, Docket # 49 at 19.
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The Court:

Then what’s the plan?

Mr. Cable:

Well, I’d like to keep this as least burdensome as possible and
as least costly as possible. Opening communications between
me and the Does or me and the subscribers is, I think, the best
course of action. Sending a letter saying, “Hey, look you
know, your Internet has been identified in infringing
copyrights.” You know, anything that opens up this course
of discussion before going into more burdensome discovery
like depositions or things like that or examining devices and
things like that.

Id. at 21.

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The Plaintiffs’ proposal – i.e., that the Court permit the Plaintiffs to subpoena the names
of the subscribers and that the Court then leave it to the Plaintiffs to figure out the rest pursuant
to informal communications – is unacceptable. The governing case law permits ex parte
discovery in the presence of a discovery plan tailored to the identification of the defendants.
Further, the Plaintiffs’ prior history of communications with the subscribers in these cases also
weighs against permitting ex parte discovery. See 12-cv-10805-NMG, Docket # 31 at 4-10.
The Plaintiffs’ lack of interest in actually litigating these cases as demonstrated by the
history of this litigation also weighs against permitting ex parte discovery. Before the Court
quashed the subpoenas previously issued, the Plaintiffs had ample time to amend their
Complaints with information they might have acquired from the informal discovery process it
claims it wishes to pursue. The Plaintiffs never sought to substitute the name of any person for
any Doe Defendant. Indeed, Plaintiff Patrick Collins, Inc. has sued at least 11,570 John Doe
Defendants in litigation around the country without ever serving a single defendant.2 The
Plaintiffs’ counsel has also represented to the Court a specific intent to press the Plaintiffs’
claims against certain individual Does by way of new individual lawsuits based upon
information acquired after the subpoenas. For example, on July 30, 2012, Plaintiffs’ Counsel
made the following representation:
In this next week, Plaintiff’s Counsel will be amending a complaint, and filing 8-12
lawsuits in this district on behalf of Patrick Collins, Inc. These new lawsuits will be
filed against individuals and not multiple Does. These individuals were discovered
and investigated using the subpoenaed information (like the information sought
here), in Patrick Collins, Inc. v. Does 1-45, 1:12-cv-10537 (D. Mass.). Counsel will
be doing the same in all other cases for Patrick Collins, Inc.

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See 12-cv-10532-GAO, Docket # 26 at 4-5. Patrick Collins has not refuted these
assertions
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12-cv-10532, Docket # 29 at 4 (emphasis added).
No such lawsuits against individual defendants were subsequently filed.
With respect to John Doe No. 22 in 12-cv-10532-GAO, the Plaintiff Discount Video has
stated an intent to dismiss Doe No. 22 from the pending action and file a new, separate
individual complaint against this Doe, even though it does not know the identity of the infringer.
Such an action smacks of an bad faith effort to harass the third-party subscriber by causing him
or her to expend further legal fees in a brand new action, which would merely repeat all that has
occurred to date. The Federal Rules specifically address this situation and authorize an award of
fees and costs. Fed. R. Civ. P. 41(d); Fed. R. Civ. P. 45(c)(1). The course of action the Plaintiff
has stated it intends to pursue also suggests an improper effort to engage in judge shopping and
evidences a disregard for the Court’s limited public resources.
Finally, the Plaintiffs have repeatedly said one thing and done another. The Plaintiffs
plainly sued only the infringers in these actions. Yet the Plaintiffs proposed and served notices
upon the subscribers informing them they had been sued. The Plaintiffs’ counsel stated to the
Court that in his opinion, subscribers are “always going to . . . be secondarily liable ” (see 12-cv10805-NMG, Docket # 23 at 19), but he also stated that he would not assert secondary liability
claims against subscribers as such claims would not pass muster under Rule 11.3 Now, the
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The Court:
Mr. Cable:
The Court:
Mr. Cable:

But you haven’t sued them [the subscribers] for secondary
liability.
Because I don’t know yet, and I think that would be fishing, and I
don’t want to go there, because - You wouldn’t sign it under Rule 11.
Right, exactly.

12-cv-10805-NMG, Docket # 23 at 20; see also Id. at 16.

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Plaintiffs have filed lawsuits against subscribers asserting secondary liability on the theory that,
upon information and belief, discovery will reveal the subscribers to have known of the
infringement via their account, or, that discovery will show the subscribers to be the parent of an
unemancipated minor between the ages of 7 and 18. See, e.g., Exquisite Multimedia, Inc. v.
Does 1-46, 12-cv-11724-RGS; SBO Pictures, Inc. v. Does 1-46, 12-cv-11723-GAO. While
those cases are not before the undersigned (though some are before the district judges assigned
to the captioned cases), the Court may permissibly consider them in assessing the reliability and
veracity of counsel’s statements. The Plaintiffs’ counsel has also repeatedly said to the
undersigned, and to other judicial officers of this Court, that he intends to litigate the claims he
has brought. Yet to date, counsel has sued well in excess of one thousand Doe Defendants in
this District, and as far as the Court is aware, he has never served a Complaint upon a single
individual defendant.
For the foregoing reasons, the Plaintiffs’ Renewed Motions for Ex Parte Discovery (12cv-10805-NMG, Docket # 43; 12-cv-10532-GAO, Docket # 43; and, 12-cv-10758-GAO, Docket
# 37) are DENIED.
Fed. R. Civ. P. 4(m) provides that,
If a defendant is not served within 120 days after the complaint is filed, the court--on
motion or on its own after notice to the plaintiff--must dismiss the action without
prejudice against that defendant or order that service be made within a specified
time. But if the plaintiff shows good cause for the failure, the court must extend the
time for service for an appropriate period.
Fed. R. Civ. P. 4(m).
The Complaints in these three cases were filed on March 23, 2012 (12-cv-10532-GAO),
April 28, 2012 (12-cv-10758-GAO) and May 4, 2012 (12-cv-10805-NMG). Thus, the 120-day

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period in which to effect service expired on September 1, 2012, for the latest-filed case. Plaintiff
Patrick Collins has moved for an extension of time to effect service in one case, 12cv-10532-GAO, Docket # 31. No such motion has been filed in the other two cases.
Initially the Court authorized ex parte discovery. When the Court subsequently quashed
the subpoenas, the Plaintiffs had failed to serve any defendants. At that time, the Court provided
the Plaintiffs with an opportunity to present a reasonable discovery plan tailored toward
identifying the Doe Defendants. The Plaintiffs did not do so. With the motions for ex parte
discovery denied, there now appears to be no path forward to service of the Complaints.
Accordingly, it is ORDERED that by the close of business on November 16, 2012, the
Plaintiffs shall show cause why their cases should not be dismissed pursuant to Fed. R. Civ. P.
4(m) for failure to effect timely service.4
SO ORDERED,
/s / Leo T. Sorokin
Leo T. Sorokin
Chief United States Magistrate Judge

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Previously, the undersigned declined to reach assertions of improper joinder raised by
the third parties (i.e., by the subscribers whose contact information the Plaintiff seeks to obtain
from their Internet Service Providers (ISPs)), in part in order to await further factual
development and in part because joinder is ordinarily an issue to be raised by Parties. See, 12cv10532-GAO, Docket # 41 at 14-16. I note that the landscape has changed in several material
respects since that decision. Judges Stearns, Young and Saylor have each rejected joinder in
virtually identical cases brought by the Plaintiff’s counsel. See, New Sensations, Inc. v. Does 1201, 12-cv-11720-RGS, Docket # 11; Third Degree Films v. Does 1-47, 12cv-10761-WGY,
Docket # 31; Third Degree Films v. Does 1-72, 12-cv-10760-FDS, Docket # 28. However, it is
not necessary to reach the joinder issue at this time in light of the Order to Show Cause.
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