Malibu Media, LLC v. Doe

Filing 6

MEMORANDUM re pltf's Mtn for expedited discovery 4 (Order to follow as separate docket entry)Signed by Honorable Sylvia H. Rambo on 02/11/14. (ma)

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
MALIBU MEDIA LLC,
Plaintiff
v.
JOHN DOE, subscriber assigned IP
address 98.117.244.79,
Defendant

:
:
:
:
:
:
:
:
:
:

Civil No. 1:14-CV-0166

Judge Sylvia H. Rambo

MEMORANDUM
In this internet copyright infringement action, Plaintiff claims that
Defendant, identified at this time only by his or her IP address, used a file-sharing
network to infringe Plaintiff’s copyrighted motion pictures. (See generally 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 an internet service
provider (“ISP”), identified by a forensic investigator, to obtain the name and
address of the unidentified defendant, who is associated with the identified Internet
Protocol (“IP”) address that was allegedly used to illegally copy and distribute
Plaintiff’s copyrighted work. (See id.) For the following reasons, Plaintiff’s motion
to conduct expedited discovery with respect to the identified IP address will be
granted, subject to the restrictions set forth in the accompanying order.
I.

Background
Plaintiff, Malibu Media LLC, is a filmmaker and motion picture

copyright holder that is responsible for the production of numerous commercially
released motion pictures (collectively “Motion Pictures”) that are featured on XArt.com, its subscription-based website. (Doc. 1, ¶ 8; see also Doc. 4-2.) Plaintiff
asserts the following facts in its complaint (Doc. 1), 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 individual associated with IP address
98.117.244.79 used the BitTorrent protocol to infringe on its exclusive rights by
copying, reproducing, and redistributing 24 Motion Pictures, despite Plaintiff
holding a registered copyright for each Motion Picture.1 (Doc. 1, ¶¶ 2-3; Doc. 1-2,
Exhibit A; 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, ¶ 11.) 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. (See id. at ¶¶ 11-14.) For the file to be placed on the
protocol, a user initially uploads a new file, such as a motion picture, which
BitTorrent breaks up into multiple “bits.” (See id. at ¶ 13.) BitTorrent allows many
users to join on the network to download different pieces of the initial file from each
other, rather than transferring a much larger digital file. (See id.) Once a user has
downloaded all the pieces of the file, BitTorrent uses a unique identifier on each
piece, known as a “hash value,” to reassemble the pieces into a complete file so the
user can play the downloaded file. (See id. at ¶¶ 13, 15-17.) Although the individual
user does not display his or her name while using BitTorrent, an individual exposes
the IP address he or she is using when downloading or sharing a file.
Plaintiff engaged IPP International UG (“IPP International”), a forensic
investigator, to identify direct infringers of its copyrighted Motion Pictures. (Id. at ¶

The court notes that, as of the date of this memorandum and order, five of the 24 allegedly
infringed Motion Pictures have pending registrations.
1

2

18, Doc. 4-4, ¶ 7.) Utilizing forensic software, IPP International determined that an
individual using IP address 98.117.244.79, the John Doe Defendant in this matter,
distributed at least one piece, which was identified by a unique hash value, of each of
Plaintiff’s Motion Pictures by using the BitTorrent protocol. (Doc. 1, ¶¶ 22-25; Doc.
1-2, Exhibit A; Doc. 4-4.) In other words, the John Doe Defendant allegedly used
BitTorrent to obtain, reproduce, and redistribute a copy, or at least a portion thereof,
of each of Plaintiff’s audiovisual works identified in Exhibit A of the complaint. (See
generally Doc. 1.) IPP International’s software used geolocation technology to trace
the identified IP address to a geographic area purportedly within the Middle District
of Pennsylvania. (Id. at ¶¶ 6-7.)2 Plaintiff alleges that it did not authorize or consent
to the John Doe Defendant’s reproduction or redistribution of the work. (Id. at ¶ 34.)
Plaintiff’s complaint asserts that the John Doe Defendant’s aforementioned conduct
constitutes direct copyright infringement.
On February 6, 2014, less than a week after commencing the captioned
action, Plaintiff filed the instant ex parte motion for expedited discovery, seeking
leave to serve a subpoena upon Verizon FiOS, the ISP associated with the IP address
identified by IPP International. (See Doc. 4.) In its motion, Plaintiff asserts that only
the ISP is able to determine the identity of the John Doe Defendant, as the ISP has
the billing information for each account holder associated with each IP address.

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 the John Doe Defendant at the time of the
alleged infringement establishes personal jurisdiction for purposes of the pending motion. Should the
ISP or the John Doe Defendant make a showing contrary to this assertion, the court will reexamine the
issue of personal jurisdiction.
2

3

(Doc. 5, p. 7 of 9.) Plaintiff argues that such expedited discovery is reasonable under
the circumstances.
II.

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

parties have conferred as required by Rule 26(f).3 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.
Courts faced with motions for expedited discovery requests to ascertain
the identity of “John Doe” defendants in internet copyright infringement cases often
apply the “good cause” or reasonableness standard.4 See Canal Street Films v. Does
1-22, Civ. No. 13-cv-0999, 2013 WL 1775063, *2 (M.D. Pa. Apr. 25, 2013); see
also, e.g., Samuel, Son & Co. v. Beach, Civ. No. 13-cv-0128, 2013 WL 4855325, *3
(W.D. Pa. Sept. 11, 2013); West Coast Prod. Inc. v. Does 1-169, Civ. No. 12-cv5930, 2013 WL 3793969, *1 (D.N.J. July 19, 2013); Leone v. Towanda Borough,
Civ. No. 12-cv-0429, 2012 WL 1123958, *2 (M.D. Pa. Apr. 4, 2012) (citing Kone

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.
3

Some district courts in the Third Circuit have applied an injunctive relief standard. See
Leone v. Towanda Borough, Civ. No. 12-cv-0429, 2012 WL 1123958, *2 (M.D. Pa. Apr. 4, 2012). The
injunctive relief standard is more stringent and requires the moving party to demonstrate: (1) irreparable
injury; (2) some probability of success on the 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)). 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 reasonableness standard. Leone, 2012 WL 1123958 at
*2. The court applies this standard to Plaintiff’s motion.
4

4

Corp. v. Thyssenkrupp USA, Inc., Civ. No. 11-cv-0465, 2011 WL 4478477, *3 (D.
Del. Sept. 26, 2011)).
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 I-X,
Civ. No. 12-cv-4858, 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.

5

For purposes of the instant motion, Plaintiff asserts a prima facie claim
of copyright infringement.5 Moreover, Plaintiff has no way to identify the alleged
infringer, apart from serving a subpoena on the identified ISP. Accordingly, without
granting the pending motion, Plaintiff can neither identify nor serve John Doe
Defendant, 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. (See Doc. 4-2.) Thus, identifying and serving the alleged infringer is the
only method through which Plaintiff can protect its copyright interests. Finally, the
expedited discovery requested relates to serving subpoenas upon Verizon FiOS to
gather the John Doe Defendant’s account information for the purpose of properly
identifying the alleged infringer and serving the complaint. Thus, Plaintiff’s
expedited discovery request appears reasonable and not 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 Defendant’s information.
Other district courts have expressed similar concerns and have incorporated
conditions intended to curtail unfettered expedited discovery in similar copyright
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 avers that it is
the copyright holder for each of the Motion Pictures. (See Doc. 1, ¶ 3; see also Doc. 1-3, Exhibit B.) In
addition, Plaintiff asserts that the John Doe Defendant, through the use of BitTorrent, illegally copied,
reproduced, and distributed the 24 Motion Pictures. (Doc. 1, ¶¶ 2, 20; Doc. 1-2, Exhibit A.) 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.
5

6

infringement actions. See, e.g., Vision Films, Inc. v. John Does 1-24, Civ. No. 12cv-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 Defendant beyond his or her IP
address, 98.117.244.79. Moreover, the court finds that 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: February 11, 2014.

7