Strike 3 Holdings, LLC v. Doe ( 2021 )

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 STRIKE 3 HOLDINGS, LLC, Case No.: 20-cv-02329-DMS (JLB) 12 Plaintiff, ORDER GRANTING EX PARTE 13 v. MOTION FOR LEAVE TO SERVE A THIRD-PARTY SUBPOENA PRIOR 14 JOHN DOE, subscriber assigned IP TO A RULE 26(f) CONFERENCE address 104.177.117.191, 15 Defendants. [ECF No. 4] 16 17 18 Before the Court is an Ex Parte Motion for Leave to Serve a Third-Party Subpoena 19 Prior to a Rule 26(f) Conference filed by Plaintiff Strike 3 Holdings, LLC (“Plaintiff”). 20 (ECF No. 4.) No opposition was filed, as no defendant has been named or served in this 21 case. For the reasons set forth below, Plaintiff’s ex parte motion is GRANTED. 22 I. BACKGROUND 23 This is one of the numerous cases filed by Plaintiff alleging copyright infringement 24 claims against a John Doe defendant using the BitTorrent file-sharing system.1 Plaintiff 25 alleges that it is the copyright owner of motion pictures distributed through adult content 26 27 1 From January 2020 to date, Strike 3 Holdings, LLC has filed twenty-nine cases, 28 1 websites Blacked, Tushy, Blacked Raw, and Vixen. (ECF No. 1 ¶¶ 2–4.) Plaintiff alleges 2 that between November 19, 2018, and September 9, 2020,2 the person or entity assigned 3 Internet Protocol (“IP”) address 104.177.117.191 illegally downloaded and distributed 4 forty-seven of Plaintiff’s motion pictures through his, her, or its use of the online BitTorrent 5 file distribution network. (Id. ¶¶ 4–5, 44, 49–54; ECF No. 1-2.) On November 28, 2020, 6 Plaintiff commenced this action against Defendant “John Doe, subscriber assigned IP 7 address 104.177.117.191.” (ECF No. 1.) The Complaint alleges a single claim of 8 copyright infringement. (Id. ¶¶ 49–54.) 9 Because Defendant used the Internet to commit the alleged infringement, Plaintiff 10 alleges that it knows Defendant only by his, her, or its IP address, which was assigned to 11 Defendant by the Internet Service Provider (“ISP”), AT&T U-verse. (Id. ¶¶ 5, 14.) In the 12 present motion, Plaintiff asserts that AT&T U-verse is the owner of Defendant’s IP address, 13 and thus, “is the only party with the information necessary to identify Defendant.” (ECF 14 No. 4-1 at 7.) Plaintiff therefore seeks leave to serve a Rule 45 subpoena on AT&T U- 15 verse requesting the name and address associated with IP address 104.177.117.191. (Id. at 16 7–8.) 17 II. LEGAL STANDARD 18 Discovery is not permitted before the parties have conferred pursuant to Federal Rule 19 of Civil Procedure 26(f) unless authorized by court order. Fed. R. Civ. P. 26(d)(1). 20 “[H]owever, in rare cases, courts have made exceptions, permitting limited discovery to 21 ensue after filing of the complaint to permit the plaintiff to learn the identifying facts 22 necessary to permit service on the defendant.” Columbia Ins. Co. v. Seescandy.com, 185 23 F.R.D. 573, 577 (N.D. Cal. 1999). Requests to conduct discovery prior to a Rule 26(f) 24 25 26 2 Plaintiff does not specifically allege this infringement period in the Complaint but 27 attaches as an exhibit to the Complaint a table reflecting that the subscriber assigned IP address 104.177.117.191 engaged in allegedly infringing activity between 28 1 conference are granted upon a showing of good cause by the moving party, which may be 2 found “where the need for expedited discovery, in consideration of the administration of 3 justice, outweighs the prejudice to the responding party.” Semitool, Inc. v. Tokyo Electron 4 Am., Inc., 208 F.R.D. 273, 275–76 (N.D. Cal. 2002). “A district court’s decision to grant 5 discovery to determine jurisdictional facts is a matter of discretion.” Columbia Ins. Co., 6 185 F.R.D. at 578. 7 District courts in the Ninth Circuit apply a three-factor test to determine whether 8 good cause exists to allow for expedited discovery to identify Doe defendants. Id. at 578– 9 80. “First, the plaintiff should identify the missing party with sufficient specificity such 10 that the Court can determine that [the] defendant is a real person or entity who could be 11 sued in federal court.” Id. at 578. Second, the plaintiff “should identify all previous steps 12 taken to locate the elusive defendant” to ensure that the plaintiff has made a good faith 13 effort to identify and serve process on the defendant. Id. at 579. Third, the plaintiff “should 14 establish to the Court’s satisfaction that [the] plaintiff’s suit against [the] defendant could 15 withstand a motion to dismiss.” Id. “Lastly, the plaintiff should file a request for discovery 16 with the Court, along with a statement of reasons justifying the specific discovery requested 17 as well as identification of a limited number of persons or entities on whom discovery 18 process might be served and for which there is a reasonable likelihood that the discovery 19 process will lead to identifying information about [the] defendant that would make service 20 of process possible.” Id. at 580. 21 III. DISCUSSION 22 A. Identification of Missing Party with Sufficient Specificity 23 For the Court to grant Plaintiff’s motion, Plaintiff must first identify Defendant with 24 enough specificity to enable the Court to determine that Defendant is a real person or entity 25 who is subject to the Court’s jurisdiction. See Columbia Ins. Co., 185 F.R.D. at 578. The 26 Court finds that Plaintiff has met this burden. 27 Courts in the Ninth Circuit have determined that “a plaintiff identifies Doe 28 defendants with sufficient specificity” in cases like the instant case “by providing the 1 unique IP addresses assigned to an individual defendant on the day of the allegedly 2 infringing conduct, and by using ‘geolocation technology’ to trace the IP addresses to a 3 physical point of origin.” 808 Holdings, LLC v. Collective of December 29, 2011 Sharing 4 Hash E37917C8EEB4585E6421358FF32F29C D63C23C91, No. 12-cv-00186 MMA 5 (RBB), 2012 WL 12884688, at *4 (S.D. Cal. May 8, 2012); see also Pink Lotus Entm’t, 6 LLC v. Does 1–46, No. C-11-02263, 2011 WL 2470986, at *3 (N.D. Cal. June 21, 2011) 7 (finding that the plaintiff met its burden to identify the Doe defendants with sufficient 8 specificity by identifying the Doe defendants’ IP addresses and then using geolocation 9 technology to trace the IP addresses to a point of origin). 10 Here, Plaintiff has sufficiently demonstrated that Defendant is a real person or entity 11 likely subject to the Court’s jurisdiction. Plaintiff attached to its Complaint a table 12 reflecting that the subscriber assigned IP address 104.177.117.191 engaged in allegedly 13 infringing activity between November 19, 2018, and September 9, 2020, in San Diego, 14 California. (ECF No. 1-2.) To substantiate these claims, Plaintiff attached four 15 declarations to the instant motion. 16 Plaintiff first attached the Declaration of David Williamson, an independent 17 contractor hired by Plaintiff as an Information Systems and Management Consultant. (ECF 18 No. 4-2 at 1–15 (“Ex. A”).) Mr. Williamson states that he “oversaw the design, 19 development, and overall creation of the infringement detection system called VXN Scan[,] 20 which [Plaintiff] both owns and uses to identify the IP addresses used by individuals 21 infringing Plaintiff’s movies via the BitTorrent protocol.” (Ex. A ¶ 40.) Mr. Williamson 22 then explains in detail how VXN Scan operates and its five components. One component 23 of VXN Scan is a proprietary BitTorrent client that emulates the behavior of a standard 24 BitTorrent client by repeatedly downloading data pieces from peers within the BitTorrent 25 network that are distributing Plaintiff’s movies. (Id. ¶¶ 52–55.) Another component of 26 VXN Scan is the PCAP Recorder, which records infringing BitTorrent computer 27 transactions in the form of PCAPs, or packet captures. (Id. ¶¶ 57–70.) The PCAPs contain 28 the IP addresses which are connecting to the Proprietary Client and sending pieces of a 1 computer file containing an infringing copy of one of Plaintiff’s movies to the Proprietary 2 Client through the BitTorrent network. (Id. ¶¶ 57–59.) Not only does a PCAP record the 3 IP addresses used in the network transaction, but it also records the date and time of the 4 transaction, the port number used, and the BitTorrent client used to accomplish each 5 transaction. (Id. ¶ 61.) A PCAP also identifies the “Info Hash value that was used to obtain 6 the transacted piece.” (Id. ¶ 62.) This information identifies that the data that was shared 7 in the recorded transaction was part of a file containing an infringing copy of one of 8 Plaintiff’s movies. (Id.) Although this Order touches on only two of the components of 9 VXN Scan, Mr. Williamson’s eighty-one-paragraph declaration sets forth additional in- 10 depth details of all five components of the system, providing the Court with a thorough 11 understanding of how the system reliably identifies the IP addresses assigned to individuals 12 infringing Plaintiff’s movies and verifies the infringement. (See id. ¶¶ 63–81.) 13 Second, Plaintiff provided the Declaration of Patrick Paige, a computer forensics 14 expert Plaintiff retained to analyze and retain evidence captured by VXN Scan. (ECF No. 15 4-2 at 16–22 (“Ex. B”).) Mr. Paige explains that VXN Scan “recorded numerous 16 BitTorrent computer transactions between the system and IP address 104.177.117.191 in 17 the form of PCAPs.” (Ex. B ¶ 13.) Mr. Paige states that, using a program called Wireshark, 18 he viewed and analyzed a PCAP he received from Plaintiff and was able to confirm that on 19 September 9, 2020, IP address “104.177.117.191 uploaded a piece or pieces of a file 20 corresponding to hash value D2F6EDC7D80E1087C19C03BCEB746F2C27863E3C to 21 VXN Scan.” (Id. ¶¶ 16–19.) The hash value, or Info Hash, is the data used by BitTorrent 22 to identify and locate other pieces of a desired file; in this case, the desired file contained 23 an infringing copy of one of Plaintiff’s movies. (Id. ¶ 22; see also ECF No. 1-2 at 1.) 24 Mr. Paige further opines that AT&T U-verse, Defendant’s ISP, “is the only entity that can 25 correlate the IP address [104.177.117.191] to its subscriber and identify Defendant as the 26 person assigned th[is] IP address . . . during the time of the alleged infringement.” (Id. ¶ 27 28.) 28 /// 1 Third, Plaintiff provided the Declaration of Susan B. Stalzer, an employee of 2 Plaintiff’s who verified that each digital file VXN Scan received through its transactions 3 with IP address 104.177.117.191 was identical, strikingly similar, or substantially similar 4 to one of Plaintiff’s original copyrighted works. (ECF No. 4-2 at 23–26 (“Ex. C”).) To do 5 so, Ms. Stalzer viewed each of the digital media files side-by-side with Plaintiff’s original 6 films. (See Ex. C ¶¶ 8–10.) 7 Finally, Plaintiff provided the Declaration of Emilie Kennedy, Plaintiff’s in-house 8 General Counsel. (ECF No. 4-2 at 27–30 (“Ex. D”).) Ms. Kennedy explains that after 9 Plaintiff received data from VXN Scan identifying IP address 104.177.117.191 as 10 infringing its movies, “the IP address was automatically inputted into Maxmind’s 11 Geolocation Database” on April 21, 2020.”3 (Ex. D ¶ 4.) “Maxmind [then] determined 12 that the IP address traced to a location in San Diego, California.” (Id. ¶ 5.) Ms. Kennedy 13 states that Plaintiff inputted IP address 104.177.117.191 again into the Maxmind Database 14 “[p]rior to filing its Complaint” and “before filing [her] [D]eclaration,” and both times the 15 IP address continued to trace to San Diego, California. (Id. ¶¶ 6–7.) In its motion, Plaintiff 16 further argues that this Court has previously “accepted Maxmind’s findings for purposes 17 18 19 20 3 Mr. Williamson provides in his declaration that: 21 Maxmind is “an industry-leading provider of IP intelligence and online fraud 22 detection tools.” “Over 5,000 companies use GeoIP data to locate their 23 Internet visitors and show them relevant content and ads, perform analytics, enforce digital rights, and efficiently route Internet traffic.” Maxmind is not 24 “software” or technology, but instead it is a database. Maxmind compiles 25 information it receives from Internet Service Providers (ISPs) containing the city and state locations of the users of the ISPs and their respective IP 26 addresses. Maxmind maintains and updates this list weekly and sells access 27 to it. 28 1 of allowing expedited discovery.” (ECF No. 4-1 at 13 (citing Criminal Prods., Inc. v. Doe, 2 No. 16-cv-2589 WQH (JLB), 2016 WL 6822186, at *3 (S.D. Cal. Nov. 18, 2016).) 3 Based on Plaintiff’s IP address tracing efforts, the timing of its efforts, and Plaintiff’s 4 continued tracing of IP address 104.177.117.191 to San Diego, California, the Court 5 concludes that Plaintiff has met its evidentiary burden of identifying Defendant with 6 sufficient specificity and has shown that Defendant’s IP address likely relates to a physical 7 address within the Court’s jurisdiction. 8 B. Previous Attempts to Locate Defendant 9 Plaintiff must next identify all steps it took to locate Defendant to ensure the Court 10 that it has made a good faith effort to identify and serve process on Defendant. See 11 Columbia Ins. Co., 185 F.R.D. at 579. The Court finds that Plaintiff has met this burden. 12 In its motion, Plaintiff states that it has diligently attempted to locate Defendant by 13 searching for Defendant’s IP address using online search engines and “various web search 14 tools.” (ECF No. 4-1 at 14.) Plaintiff has also “review[ed] numerous sources of authority,” 15 such as “legislative reports, agency websites, informational technology guides, [and] 16 governing case law” regarding whether it is possible to identify such a defendant by other 17 means and has “discussed the issue at length with computer investigators and cyber security 18 consultants.” (Id.) Plaintiff argues that it cannot determine any other means of obtaining 19 Defendant’s identity other than through subpoenaing the information from Defendant’s 20 ISP. (Id.) 21 Further, as discussed above, Plaintiff retained Mr. Paige, a computer forensics 22 expert, who analyzed the data captured by VXN Scan and was able to determine that IP 23 address 104.177.117.191 was engaged in the allegedly infringing activity on 24 September 9, 2020. (See Ex. B ¶¶ 13–25.) Mr. Paige also opined that Defendant’s ISP is 25 the only entity that can correlate IP address 104.177.117.191 to its subscriber and identify 26 Defendant as the person assigned this IP address during the time of the alleged 27 infringement. (Id. ¶ 28.) 28 /// 1 Based on the foregoing, the Court is satisfied that Plaintiff has made a good faith 2 effort to locate Defendant and that Plaintiff cannot, on its own, identify Defendant with 3 any greater specificity than as the subscriber assigned by AT&T U-verse to IP address 4 104.177.117.191. Accordingly, the Court finds that Plaintiff has made a good-faith effort 5 to identify and locate Defendant before filing the instant motion. 6 C. Whether Plaintiff’s Complaint Could Withstand a Motion to Dismiss 7 Lastly, Plaintiff must establish that its Complaint could survive a motion to dismiss. 8 Columbia Ins. Co., 185 F.R.D. at 579. The Court finds that Plaintiff has met this burden. 9 Plaintiff’s Complaint alleges a single cause of action against Defendant: direct 10 copyright infringement. (ECF No. 1 ¶¶ 49–54.) To survive a motion to dismiss for failure 11 to state a claim upon which relief can be granted, “a complaint must contain sufficient 12 factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” 13 Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 14 544, 570 (2007)). To state a claim of direct copyright infringement, a plaintiff “must show: 15 (1) ownership of a valid copyright; and (2) that the defendant violated the copyright 16 owner’s exclusive rights under the Copyright Act.” Ellison v. Robertson, 357 F.3d 1072, 17 1076 (9th Cir. 2004) (citing 17 U.S.C. § 501(a) (2003)). “In addition, direct infringement 18 requires the plaintiff to show causation (also referred to as ‘volitional conduct’) by the 19 defendant.” Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657, 666 (9th Cir. 2017). 20 In the Complaint, Plaintiff alleges to be the owner of the copyrighted works at issue 21 and asserts that each work was registered with the United States Copyright Office. (ECF 22 No. 1 ¶¶ 4, 39, 44–47.) Exhibit A to the Complaint, which shows the hash values of the 23 purportedly infringed movies, contains the copyright registration number for each of the 24 works that correspond with those hash values. (ECF No. 1-2.) Plaintiff further alleges that 25 Defendant is the user behind IP address 104.177.117.191 who used the BitTorrent file 26 network to “illegally download and distribute Plaintiff’s copyrighted motion pictures,” and 27 that the infringement was “continuous and ongoing.” (ECF No. 1 ¶¶ 14, 30, 46.) Lastly, 28 Plaintiff alleges that “[a]t no point in time did [it] authorize, permit or consent to 1 Defendant’s copying, distribution, performance and/or display of its Works, expressly or 2 otherwise.” (Id. ¶ 52.) 3 The Court finds that Plaintiff has alleged a prima facie case of direct copyright 4 infringement and therefore, its Complaint would likely withstand a motion to dismiss by 5 Defendant. 6 D. Specific Discovery Request 7 Finally, before the Court grants Plaintiff’s Motion, Plaintiff “should file a request 8 for discovery with the Court.” Columbia Ins. Co., 185 F.R.D. at 580. Plaintiff has not 9 provided the Court with a proposed subpoena, but the Court has sufficient information to 10 determine that “there is a reasonable likelihood that [a subpoena] will lead to identifying 11 information about [D]efendant that would make service of process possible.” Id. Plaintiff 12 states that it plans to issue a subpoena upon AT&T U-verse, Defendant’s ISP, requesting 13 only the true name and address of the subscriber of IP address 104.177.117.191. (ECF No. 14 4-1 at 8.) Further, Plaintiff provides that AT&T U-verse is the only entity that can identify 15 Defendant by his, her, or its IP address. (Ex. B ¶ 28.) Accordingly, the Court finds that 16 Plaintiff need not file the proposed subpoena with the Court. 17 IV. CONCLUSION 18 For the reasons set forth above, the Court finds good cause to grant Plaintiff leave to 19 serve a Rule 45 subpoena upon AT&T U-verse in advance of the Rule 26(f) conference. 20 However, despite Plaintiff’s representations of good faith (ECF No. 4-1 at 9–10), the Court 21 shares the concern noted by other courts in this District of “‘unscrupulous tactics [being] 22 used by certain plaintiffs, especially in the adult film industry, to shake down the owners 23 of IP addresses’ to exact quick and quiet settlements from possibly innocent defendants 24 who pay out only to avoid potential embarrassment.” Malibu Media, LLC v. John Doe, 25 No. 16-cv-00786-JLS-NLS, 2016 WL 9488778, at *4 (S.D. Cal. May 6, 2016) (quoting 26 Malibu Media, LLC v. Does 1–5, No. 12 Civ. 2950(JPO), 2012 WL 2001968, at *1 27 (S.D.N.Y. June 1, 2012)). The Court therefore finds that a limited protective order is 28 necessary to protect Defendant’s privacy. Further, Plaintiff has invited the Court to issue 1 a protective order establishing procedural safeguards “should the Court find such 2 procedures to be appropriate.” (ECF No. 4-1 at 18.) Accordingly, the Court GRANTS 3 Plaintiff’s ex parte motion and ORDERS as follows: 4 1. Plaintiff may serve on AT&T U-verse a subpoena, pursuant to and compliant 5 with the procedures of Federal Rule of Civil Procedure 45, seeking only the name and 6 address of the subscriber assigned IP address 104.177.117.191 for the relevant time period 7 of the alleged infringement. Plaintiff shall not seek from AT&T U-verse any other 8 personally identifiable information about the subscriber; 9 2. Plaintiff’s subpoena to AT&T U-verse must provide a minimum of forty- 10 five (45) calendar days’ notice before any production responsive to the subpoena shall be 11 made to Plaintiff; 12 3. At the time Plaintiff serves its subpoena on AT&T U-verse, Plaintiff shall also 13 serve on AT&T U-verse a copy of this Order; 14 4. Within fourteen (14) calendar days after service of the subpoena, AT&T U- 15 verse shall notify the subscriber assigned IP address 104.177.117.191 that his, her, or its 16 identity has been subpoenaed by Plaintiff and shall provide the subscriber a copy of this 17 Order with the required notice; 18 5. The subscriber whose identity has been subpoenaed shall have thirty (30) 19 calendar days from the date of such notice to challenge AT&T U-verse’s disclosure of 20 his, her, or its name and address by filing an appropriate pleading with this Court contesting 21 the subpoena; 22 6. If AT&T U-verse seeks to modify or quash the subpoena, it shall do so as 23 provided by Federal Rule of Civil Procedure 45(d)(3); 24 7. In the event a motion to quash, modify, or otherwise challenge the subpoena 25 is brought properly before the Court, AT&T U-verse shall preserve the information sought 26 by the subpoena pending the resolution of any such motion; and 27 8. Plaintiff may only use the information disclosed in response to a Rule 45 28 subpoena served on AT&T U-verse for the purpose of protecting and enforcing Plaintiff’s 1 || rights as set forth in its Complaint. If Defendant wishes to proceed anonymously, Plaintiff 2 ||may not release any identifying information without a court order allowing the release of 3 || the information. 4 IT IS SO ORDERED. 5 Dated: January 11, 2021 7 n. Jill L. Burkhardt ited States Magistrate Judge 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28