Canal Street Films v. Does 1-22

Filing 6

MEMORANDUM AND ORDER GRANTING pltf's MOTION to Expedite Discovery 4 subject to conditions. (1) Pltf may immediately serve a Rule 45 subpoena on the ISPslisted in Exhibit A to the complaint (Doc. 1-2, p. 5 of 5) for the purpose of obtaining inf ormation necessary to identify John Doe Dfts 1-22, specifically his or her name and address. The subpoena shall have a copy of this order attached;(2) The ISPs will have 30 days from the date of service of the Rule 45subpoena to serve John Doe Dfts 1 -22 with a copy of the subpoena and acopy of this order. The ISPs may serve John Doe Defendants 1-22 using anyreasonable means, including written notice sent to his or her last known address, transmitted either by first-class mail or via overnight se rvice;(3) John Doe Dfts 1-22 shall have 30 days from the date of service of the Rule 45 subpoena to file any motions with this court contesting the subpoena (including a motion to quash or modify the subpoena). The ISPs may notturn over the John Doe Dfts identifying information to Pltf before theexpiration of this 30-day period. Additionally, if a Dft or ISP files a motionto quash the subpoena, the ISPs shall not produce any information to Pltf untilthe issues have been addressed and the court i ssues an order instructing the ISPs to resume production of the requested discovery;(4) If the 30-day period lapses without a John Doe Dft or ISP contesting the subpoena, the ISPs shall have 10 days to produce the information responsive to the subpoe na to Pltf. A John Doe Dft or ISP who moves to quash or modify the subpoena, shall, at the same time as her or his filing, also notify all ISPs so that the ISPs are on notice not to release any of that John Doe Dfts contact information to Pltf until the court rules on any such motions;(5) The subpoenaed entity shall preserve any subpoenaed informationpending the resolution of any timely-filed motion to quash;(6) Any ISP that receives a subpoena pursuant to this order shall conferwith Pltf and sh all not assess any charge in advance of providing theinformation requested in the subpoena. An ISP that receives a subpoena and elects to charge for the costs of production shall provide a billing summary and cost report to Pltf;(7) Any information ultimately disclosed to Pltf in response to a Rule 45 subpoena may be used by Pltf solely for the purpose of protecting Pltfs rights as set forth in its complaint.Signed by Honorable Sylvia H. Rambo on 04/25/13. (ma)

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
CANAL STREET FILMS,
Plaintiff
v.
DOES 1-22,
Defendants

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Civil No. 1:13-CV-0999

Judge Sylvia H. Rambo

MEMORANDUM
In this internet copyright infringement action, Plaintiff claims that 22
John Doe Defendants used a file-sharing network to infringe Plaintiff’s copyrighted
motion picture. (Doc. 1.) Presently before the court is Plaintiff’s ex parte motion
for expedited discovery. (Doc. 4.) Plaintiff seeks to serve third-party subpoenas on
internet service providers (“ISPs”) identified by a forensic investigator in order to
obtain the names and addresses of the unidentified defendants, which are associated
with identified Internet Protocol (“IP”) addresses that allegedly were used to
illegally copy and distribute Plaintiff’s copyrighted work. (See Doc. 4.) For the
following reasons, Plaintiff’s motion to conduct expedited discovery with respect to
the IP addresses identified in Exhibit A (Doc. 1-2, p. 5 of 5) to the complaint will be
granted, subject to the restrictions set forth in the court’s order.

I.

Background
Plaintiff, Canal Street Films, is a film maker and motion picture

copyright holder that is responsible for the production of the commercially released
motion picture titled Scary or Die (the “Motion Picture”). (Doc. 1, ¶¶ 8-9.) Plaintiff
asserts the following facts in its complaint and motion for expedited discovery (Doc.

4) and brief in support thereof (Doc. 5). The court accepts the averments as true for
purposes of this motion, without making any findings of fact.
Plaintiff claims that the 22 John Doe Defendants set forth in its
complaint used the BitTorrent protocol to infringe on its exclusive rights by
copying, reproducing, and redistributing the Motion Picture, for which Plaintiff
holds a registered copyright. (Doc. 1, ¶ 31; Doc. 1-3, Exhibit B.) By way of
background, BitTorrent is a common peer-to-peer file sharing protocol that allows
users to distribute large amounts of data over the internet. (Doc. 1, ¶ 18.) The
BitTorrent protocol allows an individual user to copy a digital file from another user
via download, and in turn, distribute the file to other users via upload. (Id. at ¶¶ 1824.) For the file to be placed on the protocol, a user initially uploads a new file,
such as a motion picture, called a “seed,” which BitTorrent breaks up into multiple
“pieces.” (Id. at ¶ 18.) The BitTorrent protocol allows many users to join on the
network, known as a “swarm,” to download different pieces of the initial seed file
from each other. (Id. at ¶¶ 18-20.) Although the individual user does not display his
or her name while using BitTorrent, individuals who participate in a swarm expose
the IP address they are using when downloading or sharing a file. (See Doc. 1, ¶ 23;
see also Doc. 1-2, Exhibit A.) Once a user has downloaded all the pieces of the file,
BitTorrent uses a unique identifier on each piece, known as a “hash”or “hash value,”
to reassemble the pieces into a complete file so the user can play the downloaded
file. (Doc. 1, ¶ 21.)
Plaintiff engaged IP Squared Technologies Holding (“IPSTH”), a
forensic investigator, to identify direct infringers of its copyrighted Motion Picture.
(Id. at ¶ 26, Doc. 1-2.) Utilizing forensic software, IPSTH determined that 22 users,
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the John Doe Defendants in this matter, copied the same piece, which was identified
by the unique hash value, of Plaintiff’s Motion Picture by using the BitTorrent
protocol. (Doc. 1, ¶ 28; Doc. 1-2, Exhibit A.) In other words, each of the individual
John Doe Defendants in this action, identified only by his or her IP address listed in
Exhibit A to the complaint, allegedly participated in the same BitTorrent swarm to
obtain a copy of Plaintiff’s audiovisual work, or at least a portion thereof. (See
generally Doc. 1.) IPSTH’s software uses “geolocation functionality,” which traced
the identified IP addresses to geographic areas purportedly within the Middle
District of Pennsylvania. (Doc. 1-2, ¶ 13.)1 Plaintiff alleges it did not authorize or
consent to any of the John Doe Defendants’ reproduction or redistribution of the
work. (Doc. 1, ¶¶ 31, 39.) Plaintiff’s complaint asserts that the John Doe
Defendants’ aforementioned conduct constitutes direct copyright infringement
(Count I), and contributory copyright infringement (Count II).
On April 19, 2013, two days after Plaintiff initiated the action against
John Does 1-22, identifying them by their IP addresses as set forth in Exhibit A of
its complaint (Doc. 1-2), Plaintiff filed the instant ex parte motion for expedited
discovery, seeking leave to serve a subpoena upon the ISPs associated with each IP
that was identified by IPSTH. (Docs. 4 & 5.) In its motion, Plaintiff asserts that
only the ISPs are able to determine the identity of the John Doe Defendants in this
action, as the ISPs have the billing information for each account holder associated
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In situations where a plaintiff files suit against then unnamed defendants, courts have
accepted IP addresses as establishing a prima facie case of personal jurisdiction. Malibu Media, LLC v.
John Does 1-15, Civ. No. 12-cv-2077, 2012 WL 3089383, *10 (E.D. Pa. July 30, 2012) (citations
omitted). Plaintiff’s factual assertion as to the location of each John Doe Defendant at the time of the
alleged infringement establishes personal jurisdiction for purposes of the pending motion. Should the
ISPs or any John Doe Defendants make a showing contrary to this assertion, the court will reexamine the
issue of personal jurisdiction.
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with each IP address. (Doc. 4, ¶ 6.) Moreover, the declaration of William Gorfein,
President of IPSTH, states that “many ISPs only retain for a very limited amount of
time the information necessary to correlate an IP address to a particular subscriber”
(Doc. 4-1, ¶ 6) and thus, there appears to be a risk of inadvertent destruction of the
information.

II.

Legal Standard
Generally, “[a] party may not seek discovery from any source before the

parties have conferred as required by Rule 26(f).2 Fed. R. Civ. P. 26(d)(1).
However, courts have broad discretion to manage the discovery process, and can
expedite or otherwise alter the timing and sequence of discovery. See id.
District courts in the Third Circuit have applied two standards when
considering motions for expedited discovery, namely an injunctive relief standard3
and a good cause standard. See Leone v. Towanda Borough, Civ. No. 12-CV-0429,
2012 WL 1123958, *2 (M.D. Pa. Apr. 4, 2012) (citing Kone Corp. v. Thyssenkrupp
USA, Inc., Civ. No. 11-CV-0465, 2011 WL 4478477, *3 (D. Del. Sept. 26, 2011)).
As noted by the Leone Court, the Third Circuit has not yet adapted a clear standard,
however, the recent trend among courts in this circuit favors the “good cause” or
2

Federal Rule of Civil Procedure 26(f) provides that “the parties must confer as soon as
practicable – and in any event at least 21 days before a scheduling conference is to be held or a
scheduling order is due under Rule 16(b).” Fed. R. Civ. P. 26(f)(1). Parties need not await the
scheduling of a Rule 16 conference before holding a Rule 26(f) conference.
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The injunctive relief standard is more stringent and requires the moving party to
demonstrate: (1) irreparable injury; (2) some probability of success on he merits; (3) some connection
between the expedited discovery and the avoidance of the irreparable injury; and (4) some evidence that
the injury that will result without expedited discovery is greater than the injury that the defendant will
suffer if the expedited relief is granted. Gucci Am., Inc. v. Daffy’s Inc., Civ. No. 00-CV-4463, 2000 WL
1720738, *6 (D.N.J. Nov. 14, 2000) (quoting Notaro v. Koch, 95 F.R.D. 493, 405 (S.D.N.Y. 1982)).
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reasonableness standard. Id. Accordingly, the court will apply this standard to
Plaintiff’s motion.
On ruling on a motion for expedited discovery, the court should
consider the “entirety of the record to date and the reasonableness of the request in
light of all of the surrounding circumstances.” Modern Woman, LLC v. Does 1-X,
Civ. No. 12-CV-04858, 2013 WL 888603, *2 (D.N.J. Feb. 27, 2013) (citing Better
Packages, Inc. v. Zheng, Civ. No. 05-CV-4477, 2006 WL 1373055, *2 (D.N.J. May
17, 2006)). Good cause is usually found where the plaintiff’s need for expedited
discovery, in consideration of the administration of justice, outweighs the possible
prejudice or hardship to the defendant. Leone, 2012 WL 1123958 at *2; Fonovisa,
Inc. v. Does 1-9, Civ. No. 07-CV-1515, 2008 WL 919701, *10 n. 22 (W.D. Pa. Apr.
3, 2008) (citing Semitool, Inc. v. Tokyo Electron Am., Inc., 208 F.R.D. 273, 276
(N.D. Cal. 2002)).

III.

Discussion
The reasonableness standard requires the court to consider the “actual

circumstances of this case, as well as . . . certain factors such as . . . the need for
discovery, and the breadth of the moving party’s discovery requests.” Kone Corp.,
2011 WL 4478477 at *6 (quoting BAE Sys. Aircraft Controls, Inc. v. Eclipse
Aviation Corp., 224 F.R.D. 581, 587 (D. Del. 2004)). In the matter sub judice, the
actual circumstances favor expedited discovery and satisfy the reasonableness
standard.

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For purposes of the instant motion, Plaintiff asserts a prima facie claim
of copyright infringement.4 Moreover, it is clear from the circumstances present
here that Plaintiff has no way to identify the alleged infringers, apart from serving
subpoenas on the ISPs. Accordingly, without granting the pending motion, Plaintiff
can neither identify nor serve the John Doe Defendants, and this action cannot
proceed. Furthermore, Plaintiff asserts that, because the protocol does not have a
central server, the only way Plaintiff can prevent the continued illegal reproduction
and distribution of its work is to take legal action. (Doc. 1, ¶ 24.) Thus, identifying
and serving the alleged infringers is the only method through which Plaintiff can
protect its copyright interests. Finally, the expedited discovery requested relates to
serving subpoenas upon third parties to gather the John Doe Defendants’ account
information for the purpose of properly identifying the alleged infringers and
serving the complaint. Thus, Plaintiff’s expedited discovery request does not appear
overbroad.
Although the court concludes that the request for expedited discovery is
reasonable under the circumstances, in light of the unavoidable ex parte nature of
such a request, the court finds it prudent to incorporate some protections to avoid
any unintended consequences of the disclosure of the John Doe Defendants’
information. Other district courts have expressed similar concerns, and have
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“To establish [copyright] infringement, two elements must be proven: (1) ownership of a
valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publ'ns,
Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (citing Harper & Row Publishers, Inc. v. Nation
Enters., 471 U.S. 539, 548 (1985)). Here, Plaintiff satisfies both elements. First, Plaintiff attached to its
complaint a Certificate of Registration evidencing that a valid copyright exists for the Motion Picture.
(Doc. 1-3, Exhibit B.) In addition, Plaintiff asserts that each John Doe Defendant, through the use of
BitTorrent, illegally copied, reproduced, and distributed the Motion Picture. (Doc. 1, ¶ 31.) Therefore,
the court finds that Plaintiff has adequately set forth a prima facie claim of copyright infringement for
purposes of the motion sub judice. See Malibu Media, 2012 WL 3089383 at *7.
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incorporated conditions intended to curtail unfettered expedited discovery in similar
copyright infringement actions. See, e.g., Vision Films, Inc. v. John Does 1-24, Civ.
No. 12-CV-1746, 2013 WL 1163988, *5-6 (D. Del. Mar. 20, 2013) (citing Digital
Sin v. Does 1-176, 279 F.R.D. 239, 244-45 (S.D.N.Y. 2012)). Accordingly, the
court will grant Plaintiff’s motion, subject to the conditions set forth in the
accompanying order.

IV.

Conclusion
For the foregoing reasons, the court finds that Plaintiff has established a

prima facie claim for copyright infringement for purposes of the instant motion, and
that Plaintiff is unable to identify the John Doe Defendants beyond their IP
addresses. Moreover, the court finds Plaintiff’s request for expedited discovery is
narrowly tailored. Accordingly, the court concludes that Plaintiff’s request for
expedited discovery is reasonable under the circumstances. Therefore, Plaintiff’s
motion (Doc. 4) will be granted.
An appropriate order will issue.

S/SYLVIA H. RAMBO
United States District Judge

Dated: April 25, 2013.

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IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
CANAL STREET FILMS,
Plaintiff
v.
DOES 1-22,
Defendants

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Civil No. 1:13-CV-0999

Judge Sylvia H. Rambo

ORDER
Upon consideration of Plaintiff’s ex parte motion for expedited
discovery (Doc. 4), and in accordance with the accompanying memorandum of law,
IT IS HEREBY ORDERED THAT Plaintiff’s motion is GRANTED, subject to
the following conditions:
(1) Plaintiff may immediately serve a Rule 45 subpoena on the ISPs
listed in Exhibit A to the complaint (Doc. 1-2, p. 5 of 5) for the purpose of obtaining
information necessary to identify John Doe Defendants 1-22, specifically his or her
name and address. The subpoena shall have a copy of this order attached;
(2) The ISPs will have 30 days from the date of service of the Rule 45
subpoena to serve John Doe Defendants 1-22 with a copy of the subpoena and a
copy of this order. The ISPs may serve John Doe Defendants 1-22 using any
reasonable means, including written notice sent to his or her last known address,
transmitted either by first-class mail or via overnight service;
(3) John Doe Defendants 1-22 shall have 30 days from the date of
service of the Rule 45 subpoena to file any motions with this court contesting the
subpoena (including a motion to quash or modify the subpoena). The ISPs may not
turn over the John Doe Defendants’ identifying information to Plaintiff before the
expiration of this 30-day period. Additionally, if a Defendant or ISP files a motion

to quash the subpoena, the ISPs shall not produce any information to Plaintiff until
the issues have been addressed and the court issues an order instructing the ISPs to
resume production of the requested discovery;
(4) If the 30-day period lapses without a John Doe Defendant or ISP
contesting the subpoena, the ISPs shall have 10 days to produce the information
responsive to the subpoena to Plaintiff. A John Doe Defendant or ISP who moves to
quash or modify the subpoena, shall, at the same time as her or his filing, also notify
all ISPs so that the ISPs are on notice not to release any of that John Doe
Defendant’s contact information to Plaintiff until the court rules on any such
motions;
(5) The subpoenaed entity shall preserve any subpoenaed information
pending the resolution of any timely-filed motion to quash;
(6) Any ISP that receives a subpoena pursuant to this order shall confer
with Plaintiff and shall not assess any charge in advance of providing the
information requested in the subpoena. An ISP that receives a subpoena and elects
to charge for the costs of production shall provide a billing summary and cost report
to Plaintiff;
(7) Any information ultimately disclosed to Plaintiff in response to a
Rule 45 subpoena may be used by Plaintiff solely for the purpose of protecting
Plaintiff’s rights as set forth in its complaint.

S/SYLVIA H. RAMBO
United States District Judge

Dated: April 25, 2013.
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