Digiprotect USA Corporation v. John Does 1-266 et al

Filing 21

OPINION re: 4 THIRD PARTY MOTION for Protective Order and to Modify November 23, 2010 Order. filed by Comcast Cable Communications Management, LLC. The motions by Comcast and TWC are granted. The courts order of November 23, 2010 is amended. Digip rotect may only serve subpoenas on those ISPs whose IP addresses identified by Digiprotect in Exhibit B correspond to accounts located in New York and these subpoenas may only seek information regarding accounts located in the state of New York. Digi protect may not serve any subpoenas on Comcast and may only serve subpoenas on TWC seeking information as to the accounts that correspond to the ten IP addresses noted above. Digiprotect shall reimburse TWC $450 for the IP address look-ups to becompleted by TWC in this case. (Signed by Judge Thomas P. Griesa on 4/13/11) (djc)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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:
DIGIPROTECT USA CORPORATION,
:
:
Plaintiff,
:
:
– against –
:
:
JOHN/JANE DOES 1-266,
:
:
Defendants.
:
:
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10 Civ. 8759 (TPG)
OPINION

Plaintiff, Digiprotect USA Corp. (“Digiprotect”), brings this case
against unnamed defendants for copyright infringement.

This court

granted Digiprotect’s motion for expedited discovery to seek the identities
of defendants in an order dated November 23, 2010.

Non-parties

Comcast Cable Communications Management, LLC (“Comcast”) and
Time Warner Cable, Inc. (“TWC”) move separately to modify the November
23, 2010 order.
The motions are granted.
BACKGROUND
Digiprotect filed its original complaint in this case on November
19, 2010.

The complaint alleged that 266 unidentified defendants

illegally downloaded and shared the pornographic film Anal Fanatic Vol. 1
via peer-to-peer file sharing networks. The film was produced by Patrick
Collins, Inc., a California corporation, d/b/a Elegant Angel Productions,

a studio located in California.

Digiprotect, rather than the film’s

producer, is plaintiff in this case because Digiprotect purchased from
Patrick Collins, Inc. the narrow right to distribute this film via peer-topeer file sharing networks such as those allegedly used by defendants.
Digiprotect acquires such rights from various copyright holders in order
to--as Digiprotect’s counsel described it--“educate consumers.”

This

“education” of consumers consists primarily of bringing suit against such
consumers and seeking “modest settlements.” Digiprotect, for example,
has filed an almost identical suit in this district.

Digiprotect USA

Corporation v. Does 1-240, No. 10 Civ. 8760 (PAC) (S.D.N.Y. filed
November 19, 2010).
Digiprotect’s original complaint did not name any individuals but
instead attached a list--Exhibit B to the original complaint--of 266
internet protocol (“IP”) addresses linked to the alleged infringing activity.
These IP addresses correspond to individual accounts with 13 different
internet service providers (“ISPs”), including Comcast and TWC, the
moving parties now before the court.

Digiprotect, although it did not

know the location of defendants, asserted in its complaint that this court
had personal jurisdiction over defendants primarily because of the injury
suffered by Digiprotect--as the copyright license-holder--in New York,
and because the nature of peer-to-peer file sharing networks connects all
out-of-state defendants with defendants residing in New York.

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Shortly after filing its original complaint, Digiprotect moved for
expedited discovery pursuant to Fed. R. Civ. Pro. 26(f) in order to serve
subpoenas on the 13 ISPs to discover the identities of the account
holders associated with the IP addresses listed in Exhibit B. It was in
response to this motion that the November 23, 2010 order was entered,
which is the subject of the motions now before the court. The current
motions are brought by two ISPs, Comcast and TWC, 1 seeking protective
orders from those subpoenas and to amend the aforementioned order
expediting discovery.

Both Comcast and TWC argued that the

subpoenas improperly burdened them both in terms of time and money.
Comcast and TWC originally asked the court to limit the number of IP
addresses they were required to look up per week and to order
Digiprotect to reimburse them for costs incurred in these look-ups.
Comcast and TWC also argued that the subpoenas are improper as this
court lacks personal jurisdiction over the defendants.
Although only two of the 13 ISPs have challenged the court’s
November 23, 2010 order, Digiprotect has indicated that other ISPs
involved have deferred responding to subpoenas while awaiting the
court’s decision on Comcast and TWC’s motions.

Given the obvious

concern of most ISPs and the common nature of issues involved, this
decision, as it relates to personal jurisdiction, will apply not only to
Comcast and TWC, but to all the ISPs listed in Exhibit B.
1

As relevant to this case, TWC provides internet services under the brand name “Road Runner.”

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At a hearing on these motions held January 13, 2011, the court
sua sponte orally dismissed Digiprotect’s claims against all defendants
based on lack of personal jurisdiction and misjoinder.

The court

subsequently reconsidered this dismissal and withdrew its order of
dismissal at a hearing held February 2, 2011. Also at that hearing, the
court requested that Comcast and TWC present the court with
information as to the geographic location of internet accounts connected
to the IP addresses for which Digiprotect was seeking account
information. Such information, the court was told, is easily accessible
and publicly available.
Comcast informed the court that of the 103 IP addresses
identified by Digiprotect in its complaint as corresponding to Comcast
accounts, none corresponded to Comcast accounts within the state of
New York. TWC informed the court that of the 43 IP addresses identified
as corresponding to TWC accounts, only ten corresponded to TWC
accounts in the state of New York.

Thus, out of these 166 Doe

defendants for which plaintiff was seeking identifying information from
Comcast and TWC, only 10 had internet accounts within the state of New
York. Digiprotect does not dispute the accuracy of this information.
Following receipt of this information, the court held a telephone
conference where Digiprotect informed the court that, based on its own
research, out of all 266 Doe defendants named in this suit only 20 to 25
used internet accounts located in the state of New York. Thus, from the

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remaining 100 IP addresses--corresponding to accounts with the
remaining 11 ISPs--only 10-15 correspond to internet accounts within
the state of New York.
During that conference the court noted its concern about
ensnaring unsophisticated individuals from around the country in a
lawsuit based in New York. The court was concerned then, and remains
concerned, that defendants over whom the court has no personal
jurisdiction will simply settle with plaintiff rather undertake the time and
expense required to assert their rights. Acting on these concerns, the
court informed Digiprotect that discovery would only be permitted as to
ISP accounts located in the state of New York. To this end, the court
suggested that Digiprotect file an amended complaint naming only
defendants over whom the court would have personal jurisdiction.
Digiprotect later filed an amended complaint, again listing all 266
Doe defendants.

The court continues to believe that discovery is only

proper as to those Doe defendants linked to an ISP account located in
the state of New York and now so holds with further explanation.
DISCUSSION
A plaintiff may be denied discovery if it cannot make out a prima
facie case for personal jurisdiction over a defendant. See, e.g., Best Van
Lines, Inc. v. Walker, 490 F.3d 239, 255 (2d Cir. 2007); cf. Fed. R. Civ.
Pro. 26(f) (giving the court control over the discovery process and the
authority to set limitations on discovery and “determine other such

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matters as are necessary for the proper management of discovery”).
Such a showing is particularly important in a case such as this, where
defendants will likely be unaware of their rights and unable to afford an
attorney.
Thus, Digiprotect will only be permitted to seek discovery of those
individuals for whom a prima facie showing of personal jurisdiction can
be made.
Personal Jurisdiction
New York, as the forum state, supplies the requirements for
personal jurisdiction in this district.

Fort Knox Music Inc. v. Baptiste,

203 F.3d 193, 196 (2d Cir. 2000). General in personam jurisdiction in
New York, as relevant here, requires that that each defendant either be a
resident or domiciliary of New York, have sufficient contact with the state
to constitute “doing business” in the district, or be served with process
while in the district.

N.Y. C.P.L.R. § 301; ABKCO Industries, Inc. v.

Lennon, 384 N.Y.S.2d 781, 783-84 (1st Dep't 1976).
Long-arm jurisdiction over a non-resident defendant in New York
requires substantially more. A recent decision from the New York Court
of Appeals involving personal jurisdiction over defendants who use the
internet to infringe a plaintiff’s copyright is instructive.

In Penguin

Group (USA) Inc. v. Am. Buddha, 2011 N.Y. Slip Op. 02079 (Ct. of App.
March 24, 2011), the Court of Appeals lays out the requirements of New
York’s long-arm statute, N.Y. C.P.L.R. § 302(a)(3)(ii), as relevant to the

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instant

case.

Section

302(a)(3)(ii)

“provides

jurisdiction

over

nondomiciliaries who commit tortious acts outside the state that result
in injuries within New York.” American Buddha, at 3.
The dispute in American Buddha centered on the locus of the
injury in copyright cases. The court held that although traditionally the
situs of injury in commercial tort cases has been where business is lost,
rather than where the plaintiff is located, “the unique bundle of rights
granted to copyright owners,” such as publishers, “tips the balance in
favor of New York as the situs of the injury” when a New York company’s
copyright is infringed via unauthorized publishing on the internet. Id. at
10. Although questions remain as to whether the benefit of American
Buddha is properly extended to a New York company, such as
Digiprotect, that holds a very narrow license and where most of
“exclusive rights” granted to copyright holders remain with an out-ofstate company--in this case, Patrick Collins Inc.--the court need not
decide that issue because even if the situs of the “injury” is assumed to
be New York, this court would still not have jurisdiction over out-of-state
defendants.
Showing the situs of injury to be New York is only the first step in
satisfying the requirements of § 302(a)(3)(ii). As the court in American
Buddha made clear:
C.P.L.R. 302(a)(3)(ii) [requires] a plaintiff to show that the
nondomiciliary both “expects or should reasonably expect
the act to have consequences in the state” and, importantly,
“derives substantial revenue from interstate or international
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commerce.” There must also be proof that the out-of-state
defendant has the requisite “minimum contacts” with the
forum state and that the prospect of defending a suit here
comports with “traditional notions of fair play and
substantial justice,” as required by the Federal Due Process
Clause.
Id. at 13-14.
defendants

Digiprotect has made no showing that any of the Doe

expected

or

reasonably

should

have

expected

their

downloading of this film to have consequences in New York, particularly
when the producer of the film is located in California.

Furthermore,

Digiprotect surely has no basis from which to allege that the unknown
defendants derived substantial revenue from interstate or international
commerce.
Since Digiprotect can thus make no prima facie showing of longarm jurisdiction over out-of-state defendants, it is left with only those
defendants present in the jurisdiction, over whom the court has in
personam jurisdiction. Under these circumstances, the court is satisfied
that a showing that an ISP account is located in the state of New York
and corresponds to the alleged infringing of Digiprotect’s copyright is
enough to make a prima facie showing of in personam jurisdiction with
regard to the holder of that ISP account.
Therefore, the court is amending its order of November 23, 2010,
allowing expedited discovery by Digiprotect, as follows. Digiprotect may
only serve subpoenas on those ISPs whose IP addresses identified by
Digiprotect in Exhibit B correspond to accounts located in New York.
Further, these subpoenas may only seek information regarding accounts
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located in the state of New York.

As to the moving parties before the

court, Digiprotect may not serve any subpoenas on Comcast and may
only serve subpoenas on TWC seeking information as to the accounts
that correspond to the ten IP addresses noted above.
Cost of Complying with Subpoenas
Comcast and TWC also sought protective orders compelling
Digiprotect to reimburse them for the cost of complying with the
subpoenas. There is no need to consider this issue as to Comcast since
Digiprotect may not serve any subpoenas on Comcast.
TWC is seeking reimbursement in the amount of $45 per IP
address look-up. This is similar to what has been ordered in other such
cases, see West Bay One, Inc. v. Does 1 - 2000, 10 Civ. 481 (RMC)
(D.D.C. 2010); Achte/Neutnte Boll Kino Beteiligungs GMBH & Co. KG v.
Does 1 - 4,577, 10 Civ. 453 (RMC) (D.D.C. 2010), and appears
reasonable to the court. Thus, Digiprotect shall reimburse TWC $450 for
the 10 IP address look-ups TWC is required to perform.
CONCLUSION
The motions by Comcast and TWC are granted. The court’s order
of November 23, 2010 is amended. Digiprotect may only serve
subpoenas on those ISPs whose IP addresses identified by Digiprotect in
Exhibit B correspond to accounts located in New York and these
subpoenas may only seek information regarding accounts located in the
state of New York. Digiprotect may not serve any subpoenas on

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Comcast and may only serve subpoenas on TWC seeking information as
to the accounts that correspond to the ten IP addresses noted above.
Digiprotect shall reimburse TWC $450 for the IP address look-ups to be
completed by TWC in this case.

SO ORDERED.

Dated: New York, New York
April 13, 2011

/foQ

~~ f. ~-~d.-t
Thomas P. Griesa
U.S.D.J.

10 ­