Fornix Holdings LLC v. Unknown Party ( 2022 )

1 WO 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA 8 9 Fornix Holdings LLC, et al., No. CV-22-01942-PHX-DJH 10 Plaintiffs, ORDER 11 v. 12 Unknown Party, et al., 13 Defendants. 14 15 On November 23, 2022, the Court issued an ex parte1 Temporary Restraining 16 Order (“TRO”) (Doc. 28) in favor of Plaintiffs CP Productions, Inc. (“CP”) and Fornix 17 Holdings LLC (“Fornix”) (collectively “Plaintiffs”) against John Doe #1 d/b/a/ 18 Daftsex.com (“DS”) and John Doe #2 d/b/a/ Pornwild.com (“PW”) (collectively 19 “Infringing Defendants”). As required by Federal Rule 65(a)(1) and (b)(3), the Court held 20 a show cause hearing (“Hearing”) on December 5, 2022, to determine whether the TRO 21 should convert to a Preliminary Injunction (“PI”). The Court instructed Plaintiffs to 22 effectuate service to the Infringing Defendants by email prior to the Hearing, and 23 Plaintiffs complied. (Doc. 35). Despite this, none of the Defendants appeared at the 24 Hearing, and the Court found cause to convert the TRO to a PI. The following is an Order 25 formalizing the Court’s oral ruling issuing the Preliminary Injunction. 26 // 27 1 The Temporary Restraining Order was ex parte with regards to Defendants DS and PW only. Service by Plaintiffs was accomplished on the remaining Defendants prior to the 28 Telephonic Temporary Restraining Order Hearing held on November 21, 2022. (Docs. 9; 10; 11; 12; 13; 14). 1 I. Background2 2 The present matter is based on Plaintiffs’ copyright infringement claim against DS 3 and PW. Plaintiffs have produced and distributed 967 adult entertainment photos and 4 videos (“Works”), 157 of which are registered and protected by copyright (“Registered 5 Works”). (Doc. 28 at 2). Plaintiffs allege DS and PW have stolen and promoted 6 Plaintiffs’ Works on domain names owned and operated by DS and PW, respectively. 7 (See generally Doc. 28 at 3–5). 8 The Court issued a TRO that granted Plaintiffs injunctive relief against PW, 9 denied injunctive relief against DS,3 and granted Plaintiffs’ request for alternative service 10 and expedited discovery (Doc. 28). In granting Plaintiffs’ injunctive relief against PW, 11 the Court (1) ordered Defendant Namecheap, Inc. (“Namecheap”) to immediately disable 12 the three domain names ; ; and ; and (2) ordered Defendant Cloudflare, Inc. (“Cloudflare”) to 14 suspend all services to and place an administrative lock on ; 15 ; and . (Doc. 28 at 15).4 At the Hearing, 16 Plaintiff represented that Namecheap and Cloudflare have complied with these provisions 17 of the TRO. 18 However, Plaintiffs alerted the Court at the Hearing that the domain name 19 was removed from the Namecheap domain registrar and transferred to an 20 unknown third-party domain registrar just before the TRO was issued. Consequently, 21 Namecheap could not take action to disable the domain name and only 22 2 The Court’s TRO contains extensive background information. (See Doc. 28 at 2–6). 23 The Court presumes the parties’ familiarity with the TRO, and as such, provides only an abbreviated version of the background facts here. 24 3 The Court did not grant Plaintiffs injunctive relief against DS because Plaintiffs did not 25 meet the substantive requirements for a TRO. Although Plaintiffs showed a likelihood of success on the merits of their copyright infringement claims against DS (Doc. 28 at 11), 26 Plaintiff did not show a likelihood of irreparable harm or that the balance of equities tipped in their favor because Plaintiffs’ Registered Works were removed from DS’s three 27 domain names (Id. at 12–13). 28 4 Defendant Google, LLC, was also enjoined pursuant to the Court’s TRO, but has since been dismissed from the action (Doc. 37). 1 disabled and pursuant to the Court’s 2 TRO. Plaintiffs further explained continues to redirect web browsers to the 3 website , which is another adult entertainment website. Plaintiffs 4 provided testimony at the Hearing that the domain name was featuring 5 ten of Plaintiffs’ Registered Works. Plaintiffs submitted these ten links to a third-party 6 removal agency that effectively removed Plaintiffs’ copyrighted materials from 7 . Plaintiffs maintain there is no longer any infringing content on 8 , but urge the court convert the TRO to a preliminary injunction that 9 also applies to . 10 II. Legal Standard 11 Preliminary injunctive relief is an “extraordinary remedy never awarded as of 12 right.” Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 24 (2008). To obtain a 13 preliminary injunction, a plaintiff must show: (1) a likelihood of success on the merits, 14 (2) a likelihood of irreparable harm if injunctive relief were denied, (3) that the equities 15 weigh in the plaintiff’s favor, and (4) that the public interest favors injunctive relief. Id. 16 at 20. The movant carries the burden of proof on each element of the test. See Los 17 Angeles Memorial Coliseum Comm’n v. National Football League, 634 F.2d 1197, 1203 18 (9th Cir. 1980). 19 The Ninth Circuit also employs a “sliding scale” approach to preliminary 20 injunctions, under which “the elements of the preliminary injunction test are balanced, so 21 that a stronger showing of one element may offset a weaker showing of another.” All. for 22 the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131 (9th Cir. 2011). The issuance of a 23 preliminary injunction may be appropriate when there are “‘serious questions going to the 24 merits’ and a balance of hardships that tips sharply towards the plaintiff . . . so long as the 25 plaintiff also shows that there is a likelihood of irreparable injury and that the injunction 26 is in the public interest.” Id. at 1135. “[C]ourts ‘must balance the competing claims of 27 injury and must consider the effect on each party of the granting or withholding of the 28 requested relief,’” and should be particularly mindful, in exercising their sound 1 discretion, of the “public consequences in employing the extraordinary remedy of 2 injunction.” Id. at 24 (citations omitted). 3 III. Discussion 4 The Court will convert the prior TRO against Infringing Defendants into a PI 5 because consideration of the Winter factors presently weigh in the Plaintiffs’ favor. 6 1. Likelihood of Success on the Merits 7 PW’s acts likely constitute copyright infringement under the Copyright Act of 8 1976, 17 U.S.C. § 106. To present a prima facie case of direct copyright infringement, a 9 plaintiff must demonstrate: (1) ownership of the copyright at issue; (2) a violation of an 10 exclusive right set forth in copyright, and (3) causation by the defendant; a plaintiff need 11 not prove damages. Bell v. Wilmott Storage Servs., LLC, 12 F.4th 1065, 1080 (9th Cir. 12 2021). Plaintiffs have established proof of ownership in providing information of their 13 157 Registered Works protected by copyright (Doc. 1-1). Plaintiffs have also accounted 14 that at least fourteen Registered Works have appeared on PW’s websites 15 ; ; and (Doc. 23-3), and at 16 least ten Registered Works have appeared on the website as redirected 17 by . Theses appearances all occurred without Plaintiffs’ permission. The 18 Court agrees that by displaying Plaintiffs’ Registered Works, PW undermines Plaintiffs’ 19 ability to control the exclusive use and transmission of its copyrighted Works, which 20 constitute protected rights under 17 U.S.C. § 106. Thus, Plaintiffs have established a 21 prima facie case for their copyright claims against PW. 22 2. Likelihood of Irreparable Harm 23 Plaintiffs will suffer irreparable injury unless the TRO is converted to a PI because 24 PW, through the domain name , appears to continue their infringement 25 practices. First, PW continues to shield their discovery by transferring out 26 of the Namecheap domain registrar to a new service provider. See Pac. Logistics Corp v. 27 Pac. Logistics Priority Mail, 2019 U.S. Dist. LEXIS 238332, at *6 (D. Ariz. Sep. 12, 28 2019) (converting an ex parte TRO to a PI because “Defendants may move the domain 1 name to servers outside the jurisdiction of this Court.”). Second, PW continues to redirect 2 web browsers to new or other established websites, namely . There, 3 Plaintiff’s Registered Works can be viewed free of cost. Plaintiffs represent its clients 4 are aware Plaintiffs’ Works can be viewed for free on PW’s websites and are therefore 5 dissatisfied with their paid memberships. PW’s reproduction and display of Plaintiffs’ 6 Works are thereby injuring Plaintiffs by loss of profits and damage to their goodwill and 7 reputation to their customer base. 8 3. Balance of Equities 9 The Court also believes that the balance of equities falls in favor of Plaintiffs. A 10 court order locking the websites owned and operated by PW would stop PW from 11 perpetuating their copyright infringement scheme to the detriment of Plaintiffs’ goodwill. 12 See id. Failure to issue the PI would cause Plaintiffs to suffer irreparable injury to its 13 intellectual property and reputation and would permit PW to continue using 14 ; ; ; and 15 to profit off of Plaintiffs’ Registered Works. See id. Furthermore, expedited discovery is 16 necessary to generate information regarding the identity of PW, the identities of the 17 registrants operating ; ; ; 18 and , and the identity of the third-party domain registrar that 19 was transferred to from the Namecheap domain registrar. In sum, the 20 balance of equities tip in Plaintiffs’ favor. 21 4. The Public Interest 22 Plaintiffs have taken extensive efforts to register 157 of its Works, and continue to 23 seek registration for the remaining 810 of its Works. (See Doc. 1-2 at 2–6). The Court 24 finds it is the public’s interest to preserve Plaintiffs’ exclusive rights in their Registered 25 Works and protect their interests against copyright infringement. 17 U.S.C. § 106. 26 IV. CONCLUSION 27 For these reasons, the Court converts its TRO to a Preliminary Injunction. The 28 Court grants Plaintiffs injunctive against PW and also grants Plaintiffs’ requests for 1 alternative service and expedited discovery. 2 Accordingly, 3 IT IS HEREBY ORDERED that Plaintiffs’ requests that the Temporary 4 Restraining Order (Docs. 2, 28) be converted to a Preliminary Injunction are 5 GRANTED. 6 IT IS FURTHER ORDERED that that Plaintiffs’ request for alternative service 7 of this Order is granted. Plaintiffs are to serve Defendant John Doe #1 doing business as 8 DaftSex.com website and Defendant John Doe #2 doing business as PornWild.com 9 website within two days of the issuance of this Order. Plaintiffs’ counsel shall execute 10 service to Defendant John Doe #2 doing business as PornWild.com website via the email 11 address at 43271254b4af449b89a9d684df665322.protect@withheldforprivacy.com and 12 to Defendant John Doe #1 doing business as DaftSex.com website via the email address 13 at daftsex.com@myprivacy.net and via any email or mailing address provided by 14 Namecheap that is associated with the seven domain names ; 15 ; and ; ; ; 16 ; and . 17 IT IS FURTHER ORDERED that Defendant Namecheap is to immediately 18 disable the four domain names ; ; 19 ; and . 20 IT IS FURTHER ORDERED Defendant Cloudflare shall continue to (a) 21 suspend all services to the four domain names ; 22 ; ; and , including but not 23 limited to any website infrastructure, security, content-delivery, or hosting services, and 24 (b) place an administrative lock on ; ; 25 ; and after suspension of services takes place to prevent 26 Defendant John Doe #2 doing business as PornWild.com website or any third party from 27 accessing or downloading the content of ; 28 ; ; and and/or 1 || transferring such content to another domain name or hosting service. 2 IT IS FURTHER ORDERED that Plaintiffs shall continue to engage in || expedited discovery with Defendants Namecheap and Cloudflare regarding the identities 4|| of the owners and operators of Defendant John Doe #1 doing business as DaftSex.com || website and Defendant John Doe #2 doing business as PornWild.com website. If 6 || Defendants Namecheap and Cloudflare have information leading to the discovery of the 7\|| owners or registers of the seven domain names ; 8 || ; ; ; ; 9|| ; and , they shall produce that information. 10 IT IS FURTHER ORDERED that in the event the Infringing Defendants appear 11 || in this action, a trial on the merits is set for April 3, 2023, at 10:00 am. The Clerk of Court shall vacate the trial upon any entry of default entered against Infringing || Defendants. 14 Dated this 6th day of December, 2022. 15 16 ip Gum SZ V7 norable’Diang4. Hunfetewa 18 United States District Judge 19 20 21 22 23 24 25 26 27 28 -7-