UN4 Productions, Inc. v. Doe-188.8.131.52 et al
MEMORANDUM & ORDER: For the reasons set forth in the attached Memorandum & Order, plaintiff's motion for leave to take discovery prior to holding a Rule 26(f) conference, Docket Entry 6 , is GRANTED. Ordered by Magistrate Judge Steven M. Gold on 6/14/2017. (Kaufman, Zachary)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
UN4 PRODUCTIONS, INC.,
DOE—184.108.40.206; and DOE—220.127.116.11,
GOLD, STEVEN M., U.S. Magistrate Judge:
17-CV-3278 (PKC) (SMG)
Plaintiff UN4 Productions, Inc. (“UN4”) brings this infringement action under the
Copyright Act of 1976, 17 U.S.C. §§ 101 et seq. (the “Copyright Act”), against fourteen
unidentified Doe defendants who are charged with unlawfully downloading and distributing
unauthorized copies of plaintiff’s copyrighted work over the online BitTorrent file distribution
network. Complaint (“Compl.”) ¶¶ 1, 7, Docket Entry 1. UN4 is a film production and
distribution company and the owner of exclusive rights in Boyka: Undisputed IV (“Boyka”), a
motion picture that was released in theaters on April 18, 2017.1 Compl. ¶¶ 5-6, 13-14. UN4
alleges in its complaint that, without authorization, each of the Doe defendants used the
BitTorrent protocol to search for, reproduce, and distribute infringing copies of Boyka to the
public, thereby violating plaintiff’s exclusive rights protected by the Copyright Act. Compl.
According to the complaint, Boyka is the fourth installment in a fighting movie franchise. Compl. ¶ 13.
Plaintiff now moves ex parte for leave to take discovery prior to a Rule 26(f) conference
and, more specifically, to serve Rule 45 subpoenas on internet service providers Time Warner
Cable, Verizon FiOS, and Altice f/k/a Cablevision d/b/a Optimum Online (the “ISPs”), in order
to ascertain the true names, postal addresses, and email addresses for the subscribers associated
with the Internet Protocol (“IP”) addresses identified in the complaint.2 See Motion for
Discovery, Docket Entry 6; Memorandum of Law in Support of Plaintiff’s Motion for Leave to
Take Discovery (“Pl.’s Mem.”) at 2, Docket Entry 7.
A. LEGAL STANDARDS
Federal Rule of Civil Procedure 26(d)(1) prohibits parties from seeking discovery “from
any source” before the parties have met and conferred as required by Rule 26(f), except “when
authorized by these rules, by stipulation, or by court order.” Such an order may not be granted
absent “good cause.” See In re BitTorrent Adult Film Copyright Infringement Cases, 296 F.R.D.
80, 87 (E.D.N.Y. 2012) (citing Ayyash v. Bank Al-Madina, 233 F.R.D. 325, 326 (S.D.N.Y.
2005)); see also In re Malibu Media Adult Film Copyright Infringement Cases, 2015 WL
3605834, at *2 (E.D.N.Y. June 8, 2015) (noting that courts in this District “generally require a
showing of ‘good cause’ prior to permitting expedited discovery prior to a Rule 26(f)
Plaintiff relies on the five-factor test adopted by the Second Circuit in Arista Records,
LLC v. Doe 3, 604 F.3d 110, 119 (2d Cir. 2010), to decide a motion to quash brought by a John
Doe defendant seeking to preserve his anonymity. See Pl.’s Mem. at 7-8. In Arista, the Second
Circuit identified the “principal factors” for courts to consider in such cases as including: “(1) the
Plaintiff has provided a list of the pertinent IP address in an exhibit attached to its complaint. See Compl., Ex. A,
Docket Entry 1-1.
concreteness of the plaintiff’s showing of a prima facie claim of actionable harm, (2) the
specificity of the discovery request, (3) the absence of alternative means to obtain the
subpoenaed information, (4) the need for the subpoenaed information to advance the claim, and
(5) the objecting party’s expectation of privacy.” Arista, 604 F.3d at 119 (quoting Sony Music
Entm’t Inc. v. Does 1-40, 326 F. Supp. 2d 556, 564-65 (S.D.N.Y. 2004)). As plaintiff correctly
notes, the same factors are considered by courts deciding whether to permit a party in a copyright
infringement case to take limited discovery before participating in a Rule 26(f) conference. See
Malibu Media, LLC v. John Doe Subscriber Assigned IP Address 18.104.22.168, 2016 WL
2894919, at *2 (S.D.N.Y. May 16, 2016); Malibu Media, LLC v. Doe, 2015 WL 4092417, at *1
(S.D.N.Y. July 6, 2015); Rotten Records, Inc. v. Doe, 108 F. Supp. 3d 132, 133 (W.D.N.Y.
2015); BitTorrent, 296 F.R.D. at 87; Malibu Media, LLC v. John Does 1-10, 2012 WL 1020455,
at *1 (E.D.N.Y. Mar. 26, 2012). Here, all five Arista factors are satisfied.
1. Plaintiff’s Prima Facie Showing of Infringement
The first Arista factor examines whether a plaintiff has made a concrete, prima facie
showing of actionable harm. To make a prima facie showing of copyright infringement, a
plaintiff must allege “(1) ownership of a valid copyright in a work, and (2) the copying of
elements of the work that are original.” Malibu Media, 2012 WL 1020455, at *1 (citing Feist
Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991)). In addition, subject to
limited exceptions, Section 411(a) of the Copyright Act “requires copyright holders to register
their works before suing for copyright infringement.” Reed Elsevier, Inc. v. Muchnick, 559 U.S.
154, 157 (2010) (citing 17 U.S.C. § 411(a)).
Here, plaintiff alleges that it is the registered copyright owner of the subject motion
picture. The complaint includes the copyright registration number and a copy of the registration
is attached to the complaint as an exhibit. See Compl. ¶ 14 & Ex. B, Docket Entry 1-2. Plaintiff
alleges in its complaint that Boyka, the film, contains “wholly original material that is
copyrightable subject matter” under the Copyright Act. Compl. ¶ 15. Accordingly, plaintiff has
established registration and ownership of a valid copyright in a work.
With respect to unauthorized copying, plaintiff alleges that, without its authorization,
defendants employed BitTorrent, an online peer-to-peer file sharing network that enables
computers to exchange large files, to search for, reproduce, and distribute infringing copies of
Boyka to the public. Id. ¶¶ 19, 30. Geolocation data obtained by plaintiff’s investigator,
MaverickEye UG (“MaverickEye”), identifies the IP addresses associated with each Doe
defendant and the ISPs associated with each IP address, as well as specific dates and times
defendants were observed engaging in infringing activity. Id. ¶¶ 4, 6, 31 & Ex. A. The data
obtained by MaverickEye also confirms, “to a reasonable degree of certainty, that the IP
addresses used by [d]efendants were assigned to individuals located within” the Eastern District
of New York. Compl. ¶ 4.
For the reasons set forth above, I find that the facts set forth in the complaint adequately
allege a prima facie claim against the Doe defendants for copyright infringement. See Malibu
Media, 2016 WL 2894919, at *2 (finding first Arista factor met where a “complaint plainly set
out the copyrighted works at issue and provide[d] comprehensive allegations regarding the
manner by which the [d]efendant copied the various works, including the date and time of the
infringement and the IP address and technology used to effect the copying”).
2. Specificity of the Discovery Request
The second Arista factor requires that a plaintiff’s discovery request be “sufficiently
specific to establish a reasonable likelihood that the discovery request would lead to identifying
information that would make service possible upon particular defendants who could be sued in
federal court.” BitTorrent, 296 F.R.D. at 88 (quoting Sony Music, 326 F. Supp. 2d at 566).
Here, plaintiff seeks to serve Rule 45 subpoenas on the ISPs in order to obtain the names, postal
addresses, and email addresses for each of the IP addresses that were observed engaging in
infringing activity. Pl.’s Mem. at 2. Plaintiff asserts that the requested information may be
retrieved by the ISPs “with little or no burden” and that the ISPs have policies in place that
permit them to comply with such requests. Id. at 9-10 & n.5. The information sought by
plaintiff appears sufficiently limited, specific, and narrowly tailored to further its objective of
identifying and effecting service on defendants. See Malibu Media, LLC v. Doe No. 4, 2012 WL
5987854, at *3 (S.D.N.Y. Nov. 30, 2012) (finding factor met where the subpoena requested,
inter alia, the name, permanent address, and email address associated with a particular IP
address, and noting that such a request was “highly specific in nature”). I find that this factor
thus supports granting plaintiff’s motion.
3. Absence of Alternative Means to Obtain the Information Sought
The next factor asks whether the plaintiff has any other available means for obtaining the
information sought. Plaintiff contends that it does not, and I am unaware of any alternative
avenues for procuring the information it seeks. According to plaintiff’s counsel, the true
identities of the customers associated with the relevant IP addresses are known only to the ISPs
themselves and are not reasonably capable of being determined by other means. See Declaration
of Bryan N. DeMatteo (“DeMatteo Decl.”) ¶ 9, dated June 5, 2017, Docket Entry 8. Plaintiff’s
counsel avers that there is no public record of IP address associations, and that he could not
uncover the information sought by searching websites such as
http://www.whatismyipaddress.com, http://www.ip-tracker.org, and http://www.whatismyip.com.
Id. Indeed, as courts have observed, “BitTorrent’s appeal to potential infringers is the large
degree of anonymity it provides users.” Malibu Media, 2016 WL 2894919, at *3 (citation
omitted). Accordingly, I find that this factor also weighs in plaintiff’s favor.
4. The Need for the Information Sought to Advance the Claim
The fourth Arista factor considers how “central” the need is for the subpoenaed
information to advance the plaintiff’s claim. Sony Music, 326 F. Supp. 2d at 565. Here, plaintiff
reasonably argues that it cannot litigate its claims without ascertaining the identity and address of
each Doe defendant. Pl.’s Mem. at 11. As several courts have noted, the information UN4 seeks
is essential to allowing it to pursue its legal rights against the otherwise anonymous defendants.
See Malibu Media, 2016 WL 2894919, at *3 (“[I]n the absence of the ability to subpoena the
ISP, the [p]laintiff will be unable to identify and serve [d]efendant, effectively terminating the
litigation.”); BitTorrent, 296 F.R.D. at 89 (“Plaintiffs clearly need identification of the putative
John Does in order to serve process on them and prosecute their claims.”); Sony Music, 326 F.
Supp. 2d at 566 (“Ascertaining the identities and residence of the Doe defendants is critical to
plaintiffs’ ability to pursue litigation, for without this information, plaintiffs will be unable to
serve process.”). Moreover, expedited discovery at this juncture is necessary to preserve the
requested information from being deleted by the respective ISPs. See Dig. Sin, Inc. v. Does 1176, 279 F.R.D. 239, 242 (S.D.N.Y. 2012). Thus, this factor cuts in plaintiff’s favor as well.
5. Defendants’ Expectation of Privacy
The final factor to consider is the defendants’ privacy interest in remaining anonymous.
While plaintiff admittedly seeks to obtain private and sensitive information, courts have
recognized that “ISP subscribers have a minimal expectation of privacy in the sharing of
copyrighted material.” Malibu Media, LLC v. John Does 1-11, 2013 WL 3732839, at *6
(S.D.N.Y. July 16, 2013); see also Arista, 604 F.3d at 124 (noting that a defendant’s
“expectation of privacy for sharing copyrighted music through an online file-sharing network [i]s
simply insufficient to permit him to avoid having to defend against a claim of copyright
infringement”); Sony Music, 326 F. Supp. 2d at 566 (“[D]efendants have little expectation of
privacy in downloading and distributing copyrighted [works] without permission.”). Moreover,
given the nature of the copyrighted work at issue here, the potential harm to a putative
defendant’s reputation is far less damaging if, in fact, they did not commit the conduct alleged
than it could be in a case where the defendants are accused of downloading, for example,
pornographic films or other controversial works. Cf. Next Phase Distribution, Inc. v. Does 1138, 2012 WL 691830, at *2 (S.D.N.Y. Mar. 1, 2012) (noting “the highly sensitive nature and
privacy issues that could be involved with being linked to a pornography film”). I therefore find
that any expectation of privacy the Doe defendants may have in remaining anonymous is
outweighed by plaintiff’s interest in being able to vindicate its intellectual property rights.
In light of the forgoing, plaintiff’s motion for leave to take discovery prior to holding a
Rule 26(f) conference is granted. UN4 may promptly serve the ISPs with Rule 45 subpoenas
commanding them to provide plaintiff with the true name, postal address, and email address of
each subscriber associated with each IP address listed in Exhibit A to plaintiff’s complaint. Any
information produced by the ISPs, however, will be limited to review on an attorneys’-eyes-only
basis and shall not be disclosed to UN4, or its employees or agents, with the exception that
disclosure may be made as required for the limited purpose of effecting service of process on
defendants. Although in some cases plaintiffs have been restricted from accessing defendants’
email addresses, an individual’s last known physical address is not always genuine or current.
Therefore, because service by email may be the only way to serve defendants in this case, the
disclosure of defendants’ email addresses will be permitted.
Plaintiff shall attach a copy of this Order to the subpoenas it issues to the ISPs. In
addition, plaintiff may use the information disclosed in response to the Rule 45 subpoenas served
on the ISPs only for the purpose of protecting and enforcing plaintiff’s rights as set forth in its
complaint and only for the above-captioned action and no other purpose, including, but not
limited to, future litigation against the same defendants.
The subpoena shall require the ISPs to immediately notify subscribers of the IP address
whose information is to be released so that the subscribers will have an opportunity to file
objections or motions to quash with the Court. The Court also orders that the ISPs forward the
subpoenaed information to plaintiff by July 28, 2017. If a motion to quash is filed before that
date, the ISPs shall preserve any subpoenaed information pending the resolution of the motion to
STEVEN M. GOLD
United States Magistrate Judge
Brooklyn, New York
June 14, 2017
U:\#ZAK 2016-2017\UN4 Productions, Inc. v. Doe-22.214.171.124 et al. (17cv3278) (PKC)\Motion for Pre FRCP 26(f) Discovery - FINAL.docx
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