Vision Films, Inc. v. Does 1-16

Filing 4

ORDER denying 3 Motion for Discovery Prior to Rule 26(f) Conference. Plaintiff shall show cause w/in fourteen (14) days why this case should not be dismissed for lack of subject matter jurisdiction. Signed by Magistrate Judge Terence P Kemp on 9/23/2013. (kk2)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION
Vision Films,

:

Plaintiff,
v.

:
:

Case No. 2:13-cv-857

:

JUDGE ALGENON L. MARBLEY
Magistrate Judge Kemp

John Does 1-16,
Defendants.

:
ORDER

This matter is before the Court on the motion for leave to
take discovery prior to the Rule 26(f) conference filed by
plaintiff Vision Films, Inc.

For the following reasons, the

motion for leave (#3) will be denied.

Further, Vision Films will

be directed to show cause why this case should not be dismissed
for lack of subject matter jurisdiction.
I.
This is a copyright infringement and contributory copyright
infringement case involving the file transfer technology known as
BitTorrent.

The use of this technology, which allows peer-to-

peer file sharing, has resulted in much litigation as of late.
See, e.g., Third Degree Films, Inc. v. John Does 1-72, 2013 WL
1164024 (E.D. Michigan March 18, 2013)(provides detailed
explanation of BitTorrent file-sharing protocol).

The focus of

the litigation has been the alleged use of this technology to
unlawfully reproduce and distribute via the internet copyrighted
motion pictures.

The particular motion picture at issue in this

case is “Rushlights.”
In this case, Vision Films has identified 16 John Doe
defendants by the internet protocol (IP) address assigned to them
by their internet service providers (ISPs).

Vision Films has

attached to its complaint the ISP for each defendant, the torrent

file copied and distributed by them, and their location at the
time of the allegedly infringing download.

Through its current

motion, Vision Films seeks to serve a Rule 45 subpoena on the
ISPs that issued the IP addresses to uncover the identity of the
account holders of these IP addresses, including their names,
current and permanent addresses, telephone numbers and email
addresses.

The identified ISPs include Clear Wireless, LLC,

Earthlink, Embarq Corporation (Embarq Communications, Inc.),
Frontier Communications, Horizon Telcom, Suddenlink
Communications, and WideOpenWest.

Vision Films states that any

information disclosed in response to the subpoena will be used
only for the purpose of protecting its rights under the Copyright
Act.
II.
Fed.R.Civ.P. 26(d) provides generally that discovery may not
begin prior to the Rule 26(f) conference.

However, Rule 26(d)

also provides that expedited discovery may be conducted prior to
that conference when authorized by court order.

Consequently, a

district court has the discretion to permit discovery prior to a
Rule 26(f) conference.

See, e.g., Qwest Communs. Int'l Inc. v.

Worldquest Networks, Inc., 213 F.R.D. 418, 419 (D. Colo. 2003).
Courts within the Sixth Circuit require a showing of good cause
in order to authorize expedited discovery.

Tesuco Holdings Ltd.

v. Does 1-12, 2012 WL 6607894 (E.D. Tenn. December 18, 2012).
Good cause may be found based upon “(1) allegations of
copyright infringement, (2) the danger that the ISP will not
preserve the information sought, (3) the narrow scope of the
information sought, and (4) the conclusion that expedited
discovery would substantially contribute to moving the case
forward.”

Best v. Mobile Streams, Inc., 2012 WL 5996222, *1

(S.D. Ohio November 30, 2012), citing Arista Records, LLC v. Does
1-9, 2008 WL 2982265 (S.D. Ohio July 29, 2008).
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Courts also look

to whether evidence would be lost or destroyed with time and
Id.; see

whether the proposed discovery is narrowly tailored.

also Arista Records, LLC v. Does 1-15, 2007 WL 5254326 (S.D. Ohio
May 17, 2007).
III.
Vision Films contends that it has demonstrated good cause
under the standards described above.

On this issue, Vision Films

asserts that it can show irreparable harm from the infringement
of the copyrighted motion picture.

According to Vision Films, it

has a valid copyright in the motion picture, defendants had
access to the film, and substantial similarity exists between its
copyrighted work and the alleged infringing work.

Further,

Vision Films argues that defendants will not be prejudiced by the
proposed expedited discovery because it is narrowly tailored and
sought for a very limited purpose.

Finally, it contends that it

has no other means for obtaining the identities of the Doe
defendants.
Vision Films also argues that “courts throughout the
country” have “consistently” granted motions for expedited
discovery in actions against BitTorrent defendants.

The Court’s

review of the authority cited by Vision Films indicates that this
is generally true.

Courts within the Sixth Circuit have found

good cause and granted motions for expedited discovery in such
actions as well.

See, e.g., Vision Films, Inc. v. Does 1-16,

2013 WL 1385206 (E.D. Tenn. April 3, 2013); Malibu Media, LLC v.
John Does 1-9, 2013 WL 142083 (E.D. Mich. January 11,
2013)(granting motion in part).
In granting expedited discovery in BitTorrent cases, courts
have found several factors significant.

One such factor is the

specificity with which the defendants have been identified,
including the assigned IP addresses, the date and time of the
alleged illegal download, the hash identifier of the downloaded
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file, the ISP, and the location of the IP address.

Also

significant are the steps taken by the plaintiff to locate and
identify the Doe defendants.

Further, courts have looked to

whether the elements of a copyright infringement claim have been
pled.

Courts also have considered whether the proposed discovery

seeks information likely to lead to information which would allow
a plaintiff to effectuate service on the defendants.

Finally,

courts have considered the likelihood of prejudice to any alleged
infringers.

See, e.g., Vision Films, 2013 WL 1385203, at *2.
IV.

The Court has reviewed Vision Films’ complaint and current
motion.

Based on this review, the Court is not convinced that

Vision Films owns an exclusive right under a copyright.

Rather,

based on the current state of the record, it may well be that
Vision Films lacks standing to sue for copyright infringement.
This is so for the following reasons.
Under 17 U.S.C. §106, the owner of a copyright has the
exclusive rights to do and to authorize any of the following six
specific rights:
(1) to reproduce the copyrighted work in copies or
phonorecords;
(2) to prepare derivative works based upon the
copyrighted work;
(3) to distribute copies or phonorecords of the
copyrighted work to the public by sale or other
transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and motion pictures
and other audiovisual works, to perform the copyrighted
work publicly;
(5) in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and pictorial,
graphic, or sculptural works, including the individual
images of a motion picture or other audiovisual work,
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to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the
copyrighted work publicly by means of a digital audio
transmission.
17 U.S.C. §106
Section 201(d)(1) provides that ownership may be transferred
in whole, or in part, by any means “of conveyance or by operation
of law.”

The statute defines the transfer of copyright ownership

as an assignment, mortgage, exclusive license, or any other
conveyance, alienation, or hypothecation of a copyright or of any
of the exclusive rights comprised in a copyright, whether or not
it is limited in time or place of effect, but not including a
nonexclusive license.

17 U.S.C. §101.

Further, any of the

exclusive rights “including any subdivision of any of the right
specified by §106, may be transferred as provided by clause (1)
and owned separately.

The owner of any particular exclusive

right is entitled, to the extent of that right, to all of the
protection and remedies accorded to the copyright owner ...”
U.S.C. §201(d)(2).

17

Warner/Chappell Music, Inc. V. Blue Moon

Ventures, 2011 WL 662691 (M.D. Tenn. February 14, 2011).
The statute further provides that the “legal or beneficial”
owner of an exclusive right is entitled to “institute an action
for any infringement of that particular right committed while he
or she is the owner of it.”

17 U.S.C. §501(b).

That is, “to

have standing to bring suit, a party must have some ownership
rights over at least part of the exclusive right for which he
wishes to sue.”

Warner/Chappell, supra, at * ; see also

Righthaven LLC v. Wolf, 813 F.Supp.2d 1265, 1271-1272 (D. Colo.
2011) (“only parties with a legally recognized interest in
copyright as delineated in §106 (‘legal owners’), and parties who
stand to benefit from the legal dissemination of copyrighted
material (‘beneficial owners’) have the right to sue for
infringement under §501(b) of the Copyright Act.”).
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However,

“[t]he right to sue for an accrued claim for infringement is not
an exclusive right under §106.”

Silvers v. Sony Pictures

Entertainment, Inc., 402 F.3d 881, 885 (9th Cir. 2005).

As a

result, the assignment of a right to sue without the transfer of
an associated exclusive right does not confer standing to sue.
Id. at 884, 890.
The above principles recently were applied specifically in
the BitTorrent context in Contra Piracy v. Does 1-2919, 2013 WL
2403589 (N.D. Cal. May 31, 2013).

In that case, the court found

that, based on the record before it, the plaintiff appeared to
have been assigned nothing beyond a “bare right to sue” and that
this raised a question of standing.

Of particular concern to the

court were the vague allegations of the complaint that plaintiff
was the “‘exclusive assignee of all enforcement rights and
interest worldwide, with the full authority to pursue and
prosecute any causes of action with respect to the Work.’”
at *2.

Id.

Further, plaintiff had argued in its application for

discovery that “‘it holds the exclusive enforcement rights in the
registered, copyrighted Work’ and that this assignment is
limited.”

Id.

In light of what it viewed as a lack of

explanation of the meaning of “enforcement rights”, the court
denied plaintiff’s application for early discovery and directed
plaintiff to show cause why the case should not be dismissed for
lack of subject matter jurisdiction.

Id.

Following briefing and

oral argument, the court dismissed the case finding that the
“exclusive rights” assigned to the plaintiff were merely illusory
and that the plaintiff held nothing more than the bare right to
sue.

Contra Piracy v. Does, 1-2919, 2013 WL 3828771 (N.D. Cal.

July 23, 2013).
In this case, Vision Films makes similar vague allegations
regarding its ownership rights.

For example, it alleges in the

complaint that it “has been the holder of the pertinent exclusive
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rights in the Motion Picture infringed by Defendants (Exhibit
A).”

See Complaint (#1), ¶14.

Exhibit A to the complaint lists

the author of the work and copyright claimant as Rushlights, LLC.
Attached to Exhibit A is Exhibit A-1, captioned as “Copyright
Registration Assignment Recordation Documentation.”

This exhibit

is an e-mail dated August 22, 2013 which also lists Rushlights,
LLC as the copyright claimant.

Also attached is Exhibit A-2,

captioned as “Sales Agent Confirmation.”

This one-page, typed

document in letter form, but not on what reasonably could be
described as official letterhead, is dated July 8, 2013, and is
addressed to “To whom it may concern.”

According to this

document, Vision Films is authorized:
... to enforce our copyright in this movie for all
media and worldwide.
As the sales agent, Vision Films, Inc. has the right to
protect our interest and have been granted the right to make
claims against domestic and international illegal downloads,
uploads and/or streaming movie via the internet or wireless.
In case of doubt, this includes especially to downloads,
uploads and/or streaming the movie via internet or wireless.
This document contains a signature which purports to be from
Antoni Stutz of Rushlights LLC.

In its motion for early

discovery, Vision Films again reiterates that it “owns the
exclusive rights under the registered copyright attached as
Exhibit A for the Motion Picture” but there is nothing attached
to the motion which provides any further explanation of Vision
Films’ ownership interest.
In light of all of the above, the Court concludes that this
case raises the issue of standing under circumstances similar to
those before the court in Contra Piracy.

Because standing is a

jurisdictional prerequisite, the Court may raise it sua sponte.
A plaintiff has the burden of establishing standing.

Loren v.

Blue Cross & Blue Shield of Mich., 505 F.3d 598, 606–07 (6th Cir.

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2007).

To satisfy standing requirements, a plaintiff must show:

(1) it has suffered an injury in fact that is concrete and
particularized and actual or imminent, not conjectural or
hypothetical; (2) the injury is fairly traceable to the
challenged action of the defendant; and (3) it is likely, as
opposed to merely speculative, that the injury will be redressed
by a favorable decision.

Id.

If a plaintiff cannot satisfy this

burden, their claims must be dismissed for lack of subject matter
jurisdiction.

Id.

Based on the current record, the Court is not persuaded that
Vision Films has met its burden of establishing that it has
standing to pursue this copyright infringement action relating to
the film “Rushlights.”

Given this circumstance, the Court finds

it appropriate to deny the application for early discovery at
this time.

Rather, in order to address the standing issue, the

Court will direct Vision Films to show cause why this case should
not be dismissed for lack of subject matter jurisdiction.
V.
For the reasons stated above, the motion for leave to take
discovery (#3) is denied.

Plaintiff shall, within fourteen days

of the date of this order, show cause why this case should not be
dismissed for lack of subject matter jurisdiction.
/s/ Terence P. Kemp
United States Magistrate Judge

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