Well Go USA, Inc. v. UNKNOWN PARTICIPANTS IN FILESHARING SWARM IDENTIFIED BY HASH: B7FEC872874D0CC9B1372ECE5ED07AD7420A3BBB

Filing 12

MEMORANDUM AND ORDER 8 MOTION for Discovery (Signed by Judge Keith P Ellison) Parties notified.(sloewe)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
WELL GO USA, INC.
A TEXAS CORPORATION,

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§ CIVIL ACTION NO. 4:12-cv-00963
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Plaintiff,
v.
UNKNOWN PARTICIPANTS IN
FILESHARING SWARM IDENTIFIED
BY HASH:
B7FEC872874D0CC9B1372ECE5ED07A
D7420A3BBB,
Defendants.

MEMORANDUM & ORDER
Before the Court is Plaintiff’s Motion for Leave to Identify Defendants (Doc. No. 8)
relating to the alleged copyright infringement of Plaintiff’s movie, “Ip Man 2”.
Specifically, Plaintiff seeks the names of those it believes used BitTorrent technology to
illegally share Ip Man 2. Based on Plaintiff’s Motion and the applicable law, this court
grants limited discovery.
I. BACKGROUND
BitTorrent is a peer-to-peer (“P2P”) file sharing protocol used for distributing and
sharing data on the Internet. Unlike other P2P protocols, BitTorrent downloading occurs
through a piecemeal process by which a user can receive different portions of the file from
multiple users. As soon as a user has downloaded a new piece of the file, she or he
becomes able to transmit that piece to other peers. All peers who have a common
BitTorrent file on their computer are considered a single “swarm.” A swarm is identified by
a unique hash tag, which Plaintiff identified in its complaint as “B7FEC872874D0CC9-

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B1372ECE5ED07AD7420A3BBB.” As long as users are connected to the BitTorrent
protocol, they continue to distribute data to the peers in the swarm until the user manually
disconnects from the swarm or the computer is shut down. Diabolic Video Prods., Inc. v.
Does 1–2099, 2011 WL 3100404, *1–2 (N.D.Cal. May 31, 2011) cited by K-Beech, Inc. v.
John Does 1-41, CIV.A. V-11-46, 2012 WL 773683 (S.D. Tex. Mar. 8, 2012).
Plaintiff attempts to join all Does who participated in the swarm from May 10, 2011
to July 15, 2011. (Compl. ¶ 12.) During this time, Plaintiff obtained each subscriber’s IP
address, the specific internet service provider (ISP), and the date and time of the infringing
activity. (Doc. No. 8-3.) Plaintiff acknowledges that all Defendants did not engage with
the swarm at the exact same time. (Doc. No. 8, at 7.)
Plaintiff requests leave of the court to identify each Defendant’s name, address,
telephone number, and email address. Plaintiff desires to use the subpoena provision of the
Digital Millennium Copyright Act to compel ISPs to release Defendants’ information. 17
USC § 512(h). In the alternative, Plaintiff requests permission to serve Rule 45 subpoenas
on the ISPs. This Court grants limited discovery under Rule 45, subject to the protective
order below.
II. ANALYSIS
A. Validity of Subpoena for Identifying Information
In order to seek a subpoena for identifying information of users, courts have
weighed several factors to balance the need for disclosure against First Amendment
interests. These factors include: (1) a concrete showing of a prima facie claim of actionable
harm by the plaintiff; (2) specificity of the discovery request; (3) the absence of alternative
means to obtain the subpoenaed information; (4) a central need for the subpoenaed

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information to advance the claim; and (5) the user's expectation of privacy. Arista Records,
LLC v. Doe 3, 604 F.3d 110, 114 (2d Cir. 2010) citing Sony Music Entm’t Inc. v. Does 140, 326 F.Supp.2d. 556, 565 (S.D.N.Y. 2004). See also Call of the Wild Movie, LLC v.
Does 1-1,062, 770 F. Supp. 2d 332, 350 (D.D.C. 2011); Interscope Records v. Does 1-14,
558 F. Supp. 2d 1176, 1179 (D. Kan. 2008); London-Sire Records, Inc. v. Doe 1, 542 F.
Supp. 2d 153, 164 (D. Mass. 2008).
Plaintiff has asserted a prima facie claim for copyright infringement. Plaintiff’s
Complaint alleges that Plaintiff is the owner of Ip Man 2 and that Defendants downloaded
Ip Man 2 without Plaintiff’s authorization. Plaintiff claims that once this file was
downloaded, it was a complete and accurate embodiment of Ip Man 2. Plaintiff has also
provided the IP addresses of the individuals who were participating in the swarm and
downloading the movie file illegally. (Doc. No. 8-3.) Plaintiff’s complaint, along with the
IP addresses, demonstrate a prima facie case (factor 1) and also demonstrate specificity
(factor 2).
Plaintiff also must show that there is no alternate means to obtain the information
(factor 3). Plaintiff states in its Motion that it has “obtained all information it possibly can
without discovery from the service providers.” Without expedited discovery to uncover
Defendants’ identifying information, the Court finds that Plaintiff cannot proceed. Plaintiff
has also fulfilled factor 4, demonstrating a central need for the identifying information of
Defendants. Plaintiffs cannot serve Defendants without knowing their identifying
information, nor can Defendants respond to Plaintiff’s allegations.
In terms of Defendants’ expectation of privacy, under the protective order,
Defendants will have a chance to object and respond to Plaintiff’s claims, and will have a

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chance to contest the subpoena before their names are turned over to Plaintiff. Thus, their
information will remain private during the Court’s determination of any motions that ISPs
or Defendants wish to file (including a motion to quash, or to proceed anonymously). Thus,
the Court believes that Defendants’ First Amendment rights to anonymity do not prevent
disclosure of identifying information.

B. Copyright Act Subpoena versus Rule 45 Discovery
Plaintiff seeks to identify Defendants under the Digital Millennium Copyright Act.
17 USC § 512(h). The first and most significant decision to interpret the extent of the
subpoena authority of 512(h) was Recording Industry Ass'n of America, Inc. v. Verizon
Internet Services, Inc., 351 F.3d 1229 (D.C. Cir. 2003). The Verizon court held that 512(h)
authorized subpoenas only for ISPs that were actually storing infringing material, not
simply acting as conduits for the material. In P2P protocols such as BitTorrent, ISPs do not
generally store any infringing material. The material is located on users’ computers (or in
an off-line storage device, such as a compact disc), not on the ISP computers. Recording
Indus. Ass'n of Am., Inc. v. Verizon Internet Services, Inc., 351 F.3d 1229, 1235 (D.C. Cir.
2003).
Looking at both the language and the structure of the Act, the Verizon court rested
its decision, in the main, on the text of 512(h) in relation to another subsection,
512(c)(3)(A). The court found that 512(h) required that subpoenas contain "a copy of a
notification described in subsection [512](c)(3)(A)." Verizon, 351 F.3d at 1234. The
notification provision of 512(c)(3)(A) “is found within one of the four safe harbors created
by the statute to protect ISPs from liability for copyright infringement under certain

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conditions.” In re Charter Communications, Inc., Subpoena Enforcement Matter, 393 F.3d
771, 775 (8th Cir. 2005). Each safe harbor applies to a particular ISP function. The first
safe harbor, under § 512(a), limits the liability of ISPs when they do nothing more than
transmit, route, or provide connections for copyrighted material—that is, when the ISP is a
mere conduit for the transmission. Id. Thus, a copyright owner cannot request a subpoena
for an ISP which merely acts as a conduit for data.
Each of the other three safe harbors protects the ISP from liability if the ISP
responds expeditiously to remove or disable access to infringing material. These three safe
harbors require the ISP to be able both to locate and remove the infringing material, as a
way of allowing the ISP to protect itself from liability. However, with P2P file sharing, the
file itself is on the user’s system and cannot be located or removed by the ISP.
Thus, the safe harbor implicated here, 512(a), limits the liability of an ISP when it
merely acts as a conduit for infringing material. A number of other courts have read 512(h)
in a similar manner. In re Charter Communications, 393 F.3d at 773; In re Subpoena To
Univ. of N. Carolina at Chapel Hill, 367 F. Supp. 2d 945, 952 (M.D.N.C. 2005); Interscope
Records v. Does 1-7, 494 F. Supp. 2d 388, 391 (E.D. Va. 2007). While this Court
acknowledges it is not bound to follow the precedent of Verizon, it finds compelling the
statutory analysis employed in Verizon.
Plaintiff lists nine ISPs in its Motion, but does not allege that all ISPs were storing
infringing material on their servers (rather than merely acting as conduits). Plaintiff claims
that Defendants using Verizon may have stored, shared, and viewed documents on
Verizon’s own servers. (Doc. No. 11.) However, there are eight other ISPs that were used
by Doe Defendants. Because of the nature of P2P activity, these ISPs were likely used only

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as conduits to download any infringing material. Thus, these ISPs likely fall within the safe
harbor described in 512(a) and discovery should be granted through a different mechanism
if possible.
Discovery can be granted under Rule 45 to obtain Defendants’ identifying
information, subject to a protective order. The protective order—issued under Rule 26(c)(1)
of the Federal Rules of Civil Procedure—will allow the Doe Defendants and the ISPs to be
heard before identifying information is released to Plaintiff. See Hard Drive Productions,
Inc. v. Does 1-59, CIV.A. H-12-0699, 2012 WL 1096117 (S.D. Tex. Mar. 30, 2012);
Digital Sin, Inc. v. Does 1-176, 279 F.R.D. 239, 242 (S.D.N.Y. 2012).
C. Joinder
The Court is also concerned as to whether Defendants are properly joined under
Fed. R. Civ. P. 20(a). Courts are split on the question of whether a swarm of users can be
joined in a single case. The Court recognizes that, while the Defendants participated in the
same swarm in downloading Ip Man 2, this may not be considered the same transaction or
occurrence, or the same series of transactions or occurrences. Liberty Media Holdings, LLC
v. BitTorrent Swarm, 277 F.R.D. 669 (S.D. Fla. 2011); CineTel Films, Inc. v. Does 1-1,052,
853 F. Supp. 2d 545 (D. Md. 2012); Patrick Collins, Inc. v. John Does 1–23, 11–CV–
15231, 2012 WL 1019034 (E.D.Mich. Mar. 26, 2012); Hard Drive Prods., Inc. v. Does 1–
30, 2011 WL 4915551, at *4 (E.D.Va. Oct. 17, 2011); Hard Drive Productions, Inc. v.
Does 1-188, 809 F. Supp. 2d 1150, 1156 (N.D. Cal. 2011). But see Hard Drive Prods., Inc.
v. Does 1–55, 2011 WL 4889094, at *5 (N.D.Ill. Oct. 12, 2011) (finding joinder
appropriate); Donkeyball Movie, LLC v. Does 1–171, 810 F.Supp.2d 20, 26–27, 2011 WL
1807452, at *4 (D.D.C. May 12, 2011) (same).

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In this case, the activity of all the Defendants occurred over a ten week period. One
court, considering a lesser time span of swarm activity, found that, because the activity of
the defendants occurred on “different days and times over a two-week period,” there was
“no evidence to suggest that each of the [defendants] ‘acted in concert’ with all of the
others.” Hard Drive Productions, Inc. v. Does 1-188, 809 F. Supp. 2d 1150, 1164 (N.D.
Cal. 2011). There are also manageability difficulties and procedural inefficiencies to
consider. Hard Drive Productions, Inc. v. Does 1-130, C-11-3826 DMR, 2011 WL
5573960 (N.D. Cal. Nov. 16, 2011). Joinder of the more than six hundred Defendants in
this case could seriously delay litigation proceedings. Liberty Media Holdings, LLC v.
BitTorrent Swarm, 277 F.R.D. 669, 672 (S.D. Fla. 2011). Defendants may also assert
different factual and legal defenses. Permitting joinder would force the Court to address the
unique defenses that are likely to be advanced by each individual Defendant, creating
scores of mini-trials involving differening evidence and issues. Hard Drive Prods., Inc.,
809 F.Supp.2d at 1164.
On the other hand, Defendants were trading the exact same file as part of the same
swarm. Digital Sin, Inc. v. Does 1-176, 279 F.R.D. 239, 244 (S.D.N.Y. 2012). One court
considering joinder of Does over a three month period found that “each download of the
file directly facilitated the others in such a way that the entire series of transactions would
have been different but for each of Defendants’ infringements.” Patrick Collins, Inc. v.
Doe, 2012 U.S. Dist. LEXIS 57187 (D. Md. Apr. 23, 2012).
The issue of joinder is better analyzed once unknown Defendants have been
identified and served. See MCGIP, LLC v. Does 1–18, 2011 WL 2181620, at *1 (N.D.Cal.
June 2, 2011); Digital Sin, Inc. v. Does 1-176, 279 F.R.D. 239, 244 (S.D.N.Y. 2012); Hard

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Drive Productions, Inc. v. Does 1-59, CIV.A. H-12-0699, 2012 WL 1096117 (S.D. Tex.
Mar. 30, 2012). After service, Defendants may present specific legal and factual defenses
that would demonstrate the impropriety of permissive joinder. At this time, however, the
Court finds that joinder is permissive for the purposes of carrying out the initial discovery
and of gathering Defendants’ identifying information in an efficient manner.
Finally, the Court notes that the relevant dates of the swarm listed on the Complaint
(Compl. ¶12) are not the same as the dates that Plaintiff displayed in the Exhibits attached
to its Motion. (Doc. No. 8-3.) Plaintiff alleges that the infringement started as early as April
8, 2011 and continued past July 10, 2011. However, the Court will allow discovery only for
the IP addresses that were actually identified by Plaintiff’s exhibit (Doc. No. 8-3). These IP
addresses extend from Doe #1 on April 8, 2011 to Doe #643 on July 10, 2011.
III. PROTECTIVE ORDER
IT IS HEREBY ORDERED that Plaintiff may immediately serve Rule 45
subpoena on the ISPs listed in Doc. No. 8-1 to obtain information to identify Does 1–643,
specifically her or his name, address, telephone number, and email address. The subpoena
shall have a copy of this order attached.
IT IS FURTHER ORDERED that each ISP will have 60 days from the date of
service of the Rule 45 subpoena upon it to serve Does 1–643 with a copy of the subpoena
and a copy of this order. Each ISP may serve Does 1–643 using any reasonable means,
including written notice sent to her or his last known address, transmitted either by firstclass mail or via overnight service.
IT IS FURTHER ORDERED that Does 1–643 shall have 60 days from the date of
service of the Rule 45 subpoena and this Order upon her or him to file any motions with

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this Court contesting the subpoena (including a motion to quash or modify the subpoena),
as well as any request to litigate the subpoena anonymously. The ISPs may not turn over
the Doe Defendants' identifying information to Plaintiff before the expiration of this 60–
day period and further order of the Court.
Additionally, if a Defendant or ISP files a motion to quash the subpoena, the
Defendant or ISP should inform all ISPs so that the ISPs are on notice not to release any of
the other Defendants’ contact information until the Court rules on such motions.
IT IS FURTHER ORDERED that, if the 60–day period lapses without a Doe
defendant or ISP contesting the subpoena, the respective ISPs will have 14 days to produce
the subpoenaed information to Plaintiff.
IT IS FURTHER ORDERED that ISPs must take reasonable steps to preserve the
subpoenaed information pending the resolution of any timely filed motion to quash. Any
ISP may file a motion to address any undue burden caused by this preservation obligation.
IT IS FURTHER ORDERED that an 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.
IT IS FURTHER ORDERED that any information ultimately disclosed to
Plaintiff in response to a Rule 45 subpoena may be used by Plaintiff only for the purpose of
protecting its rights as asserted in its complaint. The information disclosed is limited to use
by Plaintiff in this litigation and may not be disclosed other than to counsel for the parties.
IT IS SO ORDERED.

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SIGNED in Houston, Texas, on this the 24th day of September, 2012.

KEITH P. ELLISON
UNITED STATES DISTRICT COURT JUDGE

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