Malibu Media LLC v. John Doe subscriber assigned IP address 24.183.51.58

Filing 33

ORDER striking Exhibit C from complaint; counsel for plaintiff ordered to pay sanctions in amount of $200; stay lifted; plaintiff has 90 days to take discovery and accomplish service; plaintiff may contact any Doe household identified through ISP information. Signed by District Judge William M. Conley on 9/10/13. (krj)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
OPINION AND ORDER
MALIBU MEDIA LLC,

MALIBU MEDIA, LLC,

Plaintiff,
v.
13-cv-205-wmc
JOHN DOE subscriber
assigned IP address 24.183.51.58
Defendant.

Plaintiff,
v.
13-cv-318-wmc
JOHN DOE subscriber
assigned IP address 24.196.90.111
Defendant.

MALIBU MEDIA LLC,

MALIBU MEDIA, LLC,
Plaintiff,
13-cv-207-wmc

v.
JOHN DOE subscriber
assigned IP address 71.13.250.95
Defendant.

Plaintiff,
v.
13-cv-319-wmc
JOHN DOE subscriber
assigned IP address 66.168.17.59
Defendant.

MALIBU MEDIA LLC,

MALIBU MEDIA, LLC,
Plaintiff,
13-cv-208-wmc

v.
JOHN DOE subscriber
assigned IP address 71.87.100.125
Defendant.

Plaintiff,
v.
13-cv-320-wmc
JOHN DOE subscriber
assigned IP address 71.10.117.251
Defendant.

MALIBU MEDIA LLC,

MALIBU MEDIA, LLC,

Plaintiff,
v.
13-cv-209-wmc
JOHN DOE subscriber
assigned IP address 98.125.121.178
Defendant.

Plaintiff,
v.
13-cv-321-wmc
JOHN DOE subscriber
assigned IP address 71.90.19.244
Defendant.

MALIBU MEDIA LLC,

MALIBU MEDIA LLC,
Plaintiff,
13-cv-315-wmc

v.
JOHN DOE subscriber
assigned IP address 24.177.123.74
Defendant.
MALIBU MEDIA LLC,
v.
13-cv-317-wmc
JOHN DOE subscriber
assigned IP address 24.183.92.115
Defendant.

Plaintiff,
v.
13-cv-322-wmc
JOHN DOE subscriber
assigned IP address 97.86.116.18
Defendant.

On May 28, 2013, Magistrate Judge Crocker ordered plaintiff Malibu Media to
show cause why this court should not issue Rule 11(b) sanctions for its regular practice of
attaching an apparently unrelated and embarrassing “Exhibit C” to the complaints in
each of the above-captioned copyright infringement cases.

(Order (dkt. #6).)

Specifically, each of these exhibits purports to include titles of other movies not subject to
plaintiff’s copyright, but downloaded by the as yet anonymous defendant and chosen by
plaintiff to embarrass and harass to leverage settlement. While plaintiff offers at least
colorable justifications for attaching these lists, the court is unconvinced, concluding that
the intent was to harass and intimidate defendants into early settlements by use of the
salacious nature of others’ materials, rather than the merit of its own copyright claims.
Accordingly, the court will sanction plaintiff’s counsel $200 per case.

BACKGROUND
In recent months, plaintiff Malibu Media, a purveyor of so-called adult films, has
joined many others in bringing lawsuits in federal courts against anonymous defendants,
who are alleged to own internet addresses associated with the unlawful distribution of
copyrighted materials by use of an online “BitTorrent protocol” service in violation of
federal copyright law 17 U.S.C. §§ 101 et seq. See TCYK v. Does 1-13, 13-cv-296-wmc
(dkt. #14). Apparently, the lewd and obscene nature of the graphic titles and content
are enough to persuade many initially anonymous defendants to reach early settlements
out of fear of being “outed” should the lawsuit proceed.

See Malibu Media, LLC v.

Reynolds, 2013 U.S. Dist. LEXIS 31288 at *18-23 (discussing cases that have recognized
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the power of lawsuits alleging illegal downloading of pornographic movies “to shame
defendants into settlement agreements where they may otherwise have a meritorious
defense”).
In each of the lawsuits at issue here, Malibu Media and its counsel chose not to
rely on the relatively tame names given its own pornographic material downloaded by
defendants, but instead attached to the complaint an “Exhibit C,” comprising a list of the
numerous other files downloaded to that targeted address via BitTorrent in the preceding
several months. Malibu Media concedes it holds no copyright on any of these other
downloaded files listed in “Exhibit C,” meaning they have no direct relevance to its own
copyright claims. Particularly troubling to the court, the list on Exhibit C consistently
includes far more disturbing lewd, unusual and unredacted titles of pornographic films
allegedly also downloaded by the defendant than those belonging to plaintiff.

For

example, Malibu Media titles include “Red Satin,” “Dreams Come True” and “Tuesday
Morning,” while the titles in Exhibit C include “[Bestiality] Young Blond … Dog
(www.sickporn.in),” “Lada.Nice … Young.Girl” and “Dirty … Stories 5.” This pattern
repeats itself between the titles copyrighted by plaintiff in Exhibit B and those for which
plaintiff holds no copyright in Exhibit C for each of the eleven cases captioned above.
Recognizing that the attachment serves no pleading purpose and appears
calculated principally to harass defendants in violation of Fed. R. Civ. P. 11(b), Judge
Crocker issued an order to show cause why counsel should not be sanctioned. Amicus
Electronic Frontier Foundation (“EFF”) got wind of this order and, given its unique
insights and interests, received this court’s permission to file its own brief in support of
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sanctions. Malibu Media responded directly to Judge Crocker’s initial order to show
cause and was allowed to file a separate brief in opposition to EFF’s amicus submission.

OPINION
I. Justification for Attaching “Exhibits C”
Plaintiff’s counsel vigorously defends the decision to monitor and compile the
entire BitTorrent history for a suspect IP address, explaining its legitimate litigation
purposes. What counsel has failed to explain, however, is good reason for ever filing a
comprehensive and unfiltered list of downloads in the public record, much less as an
attachment to the original complaint.
Plaintiff’s proffered reasons for submitting the list as an attachment to the
complaint can be summarized in four points, though none survive scrutiny.

First,

plaintiff maintains that experience from previous lawsuits has taught it that the
defendant IP address owner will often protest that someone else (a houseguest, neighbor,
hacker, etc.) committed the infringing acts using the defendant’s Internet service.
Malibu Media contends that attaching a detailed list of distributed materials to the
complaint will either (1) demonstrate the futility of raising the “not me” defense by
showing a catalog of downloaded files that can all be matched with the defendant’s
lifestyle and hobbies; or (2) provide additional details about the Internet use that will
allow an innocent defendant to pinpoint the person responsible for the copyright
infringement. By showing the strength of its hand at the outset, therefore, Malibu Media

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would appear to be pursuing legitimate litigation goals: acquiescence from the guilty and
assistance from the innocent.
The problem lies in the fact that Malibu Media could achieve these same results
by pleading that it has a much more comprehensive list of materials and, if a defendant
refuses to acquiesce or assist, providing the actual list to him or her directly and
confidentially. Malibu Media v. Tashiro, 2013 U.S. Dist. LEXIS 125897 at *7. Even if
one accepts Malibu Media’s contention that attaching it to the complaint is more
efficient because it achieves the same result in one step, this does not explain its failure:
(1) to file the exhibit under seal or (2) redact the most salacious and embarrassing titles.
Not only would this avoid the obvious risk of extorting unreasonable settlements, it
would be consistent with the rules of evidence, which almost certainly would exclude on
prejudice grounds the admissibility of any of these outrageous titles, whatever marginal,
probative value they may arguably have.

Nothing is gained by filing this document

publicly in unredacted form, except to harass and embarrass defendants into early
settlements.
Second, Malibu Media says that the list lends “detail” to the complaint, insuring
against a potential Rule 12(b)(6) motion to dismiss for failure to plead a plausible claim
under Rule 8(a)(2). This argument is specious. As decisions by this and other federal
courts underscore, the complaints filed are easily specific enough to survive a motion to
dismiss on plausibility grounds without the addition of Exhibit C. Indeed, Malibu Media
concedes that in all of the cases it has filed it “has never had a case dismissed pursuant to

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Fed. R. Civ. P. 12(b)(6)” with or without the attachment of an exhibit of this kind.
(Dkt. #18, at 18.)
Equally disingenuous, Malibu expresses concern that it may actually face Rule 11
sanctions if it does not attach a list of additional copyright violations. For this dubious
proposition, counsel points to a case from the Central District of California -- Ingenuity
13, LLC v. John Doe, 12-cv-8333-ODW, CM/ECF 48. Unlike every case before this court,
the plaintiff in Ingenuity did not sue the owner of the IP address associated with the
copyright infringement, but instead named another person in the same household. The
judge criticized the plaintiff for failing to allege a reasonable basis for singling out that
particular defendant. In such a situation, there would at least be an arguable reason to
attach a list of downloads that tended to support the likelihood that the individuallyname defendant was indeed the cause of the infringement (e.g., a Notre Dame graduate
who downloaded every one of its copyrighted football broadcasts), but this provides no
reason for including even more embarrassing titles than those copyrighted by Malibu
Media itself. Moreover, there is no similar concern in the mine run of cases, where the
owner of the IP address is the defendant’s alone, as is alleged here.
If anything, plaintiff counsel’s third and fourth justifications have even less merit
than the first two.

Malibu Media argues that in “making Exhibit C a part of the

complaints, defendants must either admit or deny the allegations” and a “denial will
enable [Malibu Media] to impeach a defendant later in the case.” Similarly, Malibu
Media argues that because pleadings frame the boundaries of discovery, more expansive
pleadings will allow for more expansive discovery. Both of these arguments are belied by
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the fact that the complaints expressly state that the “Copyrights-in-Suit are solely limited
to content owned by Plaintiff as outlined in Exhibit B” and that “Exhibit C is provided
for evidentiary purposes only.” (See, e.g., 13-cv-205-wmc, dkt. #1, at ¶23.) Based on this
allegation -- the only time Exhibit C is ever mentioned in the complaint -- a defendant
need not “admit or deny” any aspect of Exhibit C.

If anything, plaintiff counsel’s

pleading seems intent on keeping Exhibit C out of the substantive pleadings. Even if
there were merit in either excuse, they would be readily addressed by serving a less public
request to admit and relying on the already-expansive definition of permissible discovery
under Fed. R. Civ. P. 26(b), rather than outrageous disclosures of little or no relevance
and obvious prejudice in a public exhibit to the complaint.

II. Lack of Intent to Harass
Even if attaching “Exhibit C” was unnecessary to further any litigation goals (other
than harassing defendants into early settlement), Malibu Media maintains that the
decision to do so was at the very least reasonable and not motivated by ill intent. To this
end, Malibu Media has filed a declaration of one of its owners expressly attesting to the
fact that “Exhibit C is not attached to complaints for the purpose of harassing defendant.”
(Dkt. #18-2, at 3.) Counsel further points out that Malibu Media has never opposed a
defendant’s motion to proceed anonymously, suggesting that this is strong evidence
weighing against any inference that attaching Exhibit C was part of a campaign to harass
or extort.

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While the court agrees with Malibu Media that there is only circumstantial
evidence of ill intent, Malibu Media’s denials do not pass the smell test, and any denial
of improper motive by its counsel does not pass the laugh test. For the reasons described
above, there exists no good basis upon which a reasonable attorney -- subject to the
ethical rules and restrictions of Rule 11 -- could conclude that attachment of Exhibit C to
a complaint “for evidentiary purposes only” served any legitimate purpose at that stage of
the litigation.
Rule 11 provides in pertinent part:
By presenting to the court a pleading, written motion, or
other paper -- whether by signing, filing, submitting, or later
advocating it -- an attorney or unrepresented party certifies
that to the best of the person's knowledge, information, and
belief, formed after an inquiry reasonable under the
circumstances:
(1) it is not being presented for any improper purpose, such
as to harass, cause unnecessary delay, or needlessly increase
the cost of litigation . . .
Fed. R. Civ. P. 11(b).

The Seventh Circuit has previously explained that “it is not

enough that the attorneys’ subjective belief and purpose are innocent; it is also necessary
that such mental state be based upon reasonable inquiry, objectively analyzed, into the
basis for the facts alleged and into the law.” Harlyn Sales Corp. Profit Sharing Plan v.
Kemper Fin. Serv’s, Inc. 9 F.3d 1263, 1270 (7th Cir. 1993). Accordingly, even if this
court is unable to conclude definitively that the attorney subjectively thought that he or
she was engaging in harassment, sanctions may be warranted where an objectively
reasonable attorney should know that: (1) there is no real need to take a given litigation
action; and (2) the action would substantially harass or embarrass the opposing party.
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Sanctions are an extreme measure in any case. As the Seventh Circuit Court of
Appeals explained in FDIC v. Tekfen Construction and Installation Co., Inc., 847 F.2d 440
(7th Cir. 1988):
While the Rule 11 sanction serves an important purpose, it is
a tool that must be used with utmost care and caution. Even
where, as here, the monetary penalty is low, a Rule 11
violation carries intangible costs for the punished lawyer or
firm. A lawyer's reputation for integrity, thoroughness and
competence is his or her bread and butter. We may not
impugn the reputation without carefully analyzing the legal
and factual sufficiency of the arguments.
Id. at 444.
Even so, these internet copyright infringement cases already give off an air of
extortion, albeit legitimate since (at least as alleged) each “John Doe” defendant did
violate plaintiff’s copyrights. (Order (dkt. #6) pp. 2-3.) Counsel enforcing these rights
for purveyors of pornographic films (even “classy” ones) by suing initially anonymous
defendants must already be aware that these cases are fraught with circumstances that
could embarrass the putative defendant should they become public and strongly
influence his or her decision to settle even a meritless suit just to make the case go away
before being publicly associated with their client’s film. Id.
This should be enough. The court’s subpoena power may not be leveraged further
by counsel to force earlier, larger settlements through explicit references to the alleged
misuse of even more outrageous or potentially embarrassing materials copyrighted by a
non-client. Accordingly, a sanction will be issued against plaintiff’s named counsel and
her law firm, jointly, for each time Exhibit C was attached to a complaint and publicly
filed in this court.
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ORDER
IT IS ORDERED that:
1) in its current form, Exhibit C is struck from the complaint in each of the
above-captioned cases and counsel for plaintiff Malibu Media, Inc. is
sanctioned $200 in each of the above captioned cases for a total of $2,200, to
be paid to the clerk of court;
2) the stays previously entered in each of these cases are lifted;
3) Malibu Media may have an additional ninety (90) days to take discovery from
ISPs and accomplish service in each of these cases, although no further
extension will be granted absent good cause shown; and
4) plaintiff may now communicate or contact any Doe household it has identified
through ISP information
Entered this 10th day of September, 2013.
BY THE COURT:
/s/
__________________________________
WILLIAM M. CONLEY
District Judge

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