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.: 21cv590-GPC-LL 12 Plaintiff, ORDER GRANTING 13 v. EX PARTE APPLICATION FOR LEAVE TO SERVE A THIRD- 14 JOHN DOE subscriber assigned IP PARTY SUBPOENA PRIOR TO A address 104.177.119.88, 15 RULE 26(f) CONFERENCE Defendant. 16 [ECF No. 4] 17 18 Currently before the Court is Plaintiff’s Ex Parte Application for leave to serve a 19 third-party subpoena prior to a Rule 26(f) conference.1 ECF No. 4. Because Defendant has 20 not been identified, no opposition or reply briefs have been filed. Having reviewed 21 Plaintiff’s motion and all supporting documents, the Court GRANTS the motion for the 22 reasons set forth below. 23 I. BACKGROUND 24 Plaintiff alleges that it “is the owner of original, award winning motion pictures 25 featured on its brand’s subscription-based adult websites.” ECF No. 4-1 at 7. 26 27 1 Reference to “Rule” refers to the Federal Rules of Civil Procedure, unless otherwise 28 1 On April 5, 2021, Plaintiff filed a complaint against John Doe subscriber assigned IP 2 address 104.177.119.88 alleging copyright infringement. ECF No. 1 (“Compl.”). Plaintiff 3 alleges that Defendant has illegally infringed by downloading, copying, and distributing 4 twenty-four of its copyrighted movies over the BitTorrent file distribution network for an 5 extended period of time without authorization. Id. at 2, 7. Plaintiff describes the BitTorrent 6 network as a “system designed to quickly distribute large files over the Internet.” Id. at 4. 7 Plaintiff further alleges that Defendant, who “attempted to hide this theft by infringing 8 Plaintiff’s content anonymously,” can be identified by his or her Internet Service Provider 9 (“ISP”), AT&T U-verse, through his or her IP address 104.177.119.88. Id. at 2. 10 On April 21, 2021, Plaintiff filed the instant Ex Parte Application seeking an order 11 from the Court allowing it to serve a subpoena on Defendant’s ISP seeking Defendant’s 12 true name and address pursuant to Rule 45 so that Plaintiff may serve Defendant and 13 prosecute the claims in its complaint. ECF No. 4-1 at 8. 14 II. LEGAL STANDARD 15 A party may not seek discovery from any source before the Rule 26(f) conference 16 unless that party first obtains a stipulation or court order permitting early discovery. 17 Fed. R. Civ. P. 26(d)(1). Courts in the Ninth Circuit apply the “good cause” standard in 18 deciding whether to permit early discovery. Semitool, Inc. v. Tokyo Electron America, 19 Inc., 208 F.R.D. 273, 276 (N.D. Cal. 2002) (adopting the conventional standard of “good 20 cause” in evaluating a request for expedited discovery). Good cause exists “where the need 21 for expedited discovery, in consideration of the administration of justice, outweighs the 22 prejudice to the responding party.” Id. Good cause for expedited discovery has been found 23 in cases involving claims of infringement and unfair competition. Id. In infringement cases, 24 expedited discovery is frequently limited to allowing plaintiffs to identify Doe defendants. 25 See Cell Firm Holdings, LLC v. Doe-72.220.126.76, No. 16cv2234-BEN (BLM), 26 2016 WL 4793161, at *3 (S.D. Cal. Sept. 14, 2016) (granting motion for expedited 27 discovery in infringement case to obtain only the true name and address of the Doe 28 defendant); Quad Int'l, Inc. v. Does 1-6, No. 2:12-cv-2631 LKK KJN, 2013 WL 142865, 1 at *4 (E.D. Cal. Jan. 11, 2013) (granting motion for expedited discovery in infringement 2 case to obtain Doe defendant’s name and contact information); UMG Recordings, Inc. v. 3 Doe, No. C-08-03999 RMW, 2008 WL 4104207, at *3 (N.D. Cal. Sept. 4, 2008) (granting 4 leave to take expedited discovery in infringement case for documents that would reveal the 5 identity and contact information for each Doe defendant). 6 District courts in the Ninth Circuit apply a three-factor test for determining whether 7 good cause exists to allow for expedited discovery to identify certain defendants. 8 Columbia Ins. Co. v. seescandy.com, 185 F.R.D. 573, 578–80 (N.D. Cal. 1999). First, the 9 plaintiff should “identify the missing party with sufficient specificity such that the Court 10 can determine that the defendant is a real person or entity who could be sued in federal 11 court.” Id. at 578. Second, the plaintiff must describe “all previous steps taken to locate the 12 elusive defendant” to ensure that plaintiff has made a good faith effort to identify the 13 defendant. Id. at 579. Third, plaintiff should establish that its lawsuit could withstand a 14 motion to dismiss. Id. 15 III. DISCUSSION 16 A. Identification of Missing Party with Sufficient Specificity 17 For the Court to grant Plaintiff’s motion, Plaintiff must first identify the Doe 18 defendant with sufficient specificity to enable the Court to determine that the Doe 19 defendant is a real person subject to the Court’s jurisdiction. Id. at 578. “Some district 20 courts in the Ninth Circuit have determined that a plaintiff identifies Doe defendants with 21 sufficient specificity by providing the unique IP addresses assigned to an individual 22 defendant on the day of the allegedly infringing conduct, and by using ‘geolocation 23 technology’ to trace the IP addresses to a physical point of origin.” 808 Holdings, LLC v. 24 Collective of Dec. 29, 2011 Sharing Hash E37917C8EEB4585E6421358FF32F29C 25 D63C23C91, No. 12cv00186 MMA (RBB), 2012 WL 12884688, at *4 (S.D. Cal. 26 May 8, 2012); see e.g., OpenMind Sols., Inc. v. Does 1-39, No. C 11-3311 MEJ, 2011 WL 27 4715200, at *2 (N.D. Cal. Oct. 7, 2011) (finding plaintiff met its burden to identify the Doe 28 defendants with sufficient specificity by identifying the unique IP addresses of individuals 1 engaged in BitTorrent protocol and using geolocation technology to trace the IP addresses 2 to a point of origin within the state of California); Pink Lotus Entm't, LLC v. Does 1-46, 3 No. C-11-02263 HRL, 2011 WL 2470986, at *3 (N.D. Cal. June 21, 2011) (same). Others 4 have found that merely identifying the IP addresses assigned to the defendants on the day 5 of the purported infringement is sufficient to satisfy the first factor.” 808 Holdings, LLC, 6 2012 WL 12884688, at *4; see e.g., First Time Videos, LLC v. Does, No. C 11-01675 LB, 7 2011 WL 1431619, at *2 (N.D. Cal. Apr. 14, 2011) (“First, First Time Videos has identified 8 the Doe defendants with sufficient specificity by submitting a chart listing each of the 9 defendants by the IP address assigned to them on the day it alleges the particular defendant 10 engaged in the infringing conduct.”). This Court finds the first standard persuasive. 11 Here, Plaintiff has provided a declaration from David Williamson, an information 12 and systems management consultant, currently employed as Plaintiff’s Chief Technology 13 Officer. ECF No. 4-2, Declaration of David Williamson (“Williamson Decl.”), ¶¶ 11–12. 14 Mr. Williamson states that he “oversaw the design, development, and overall creation of 15 the infringement detection system called VXN Scan,” which Plaintiff owns and uses to 16 “identify the IP addresses used by individuals infringing Plaintiff’s movies via the 17 BitTorrent protocol.” Id. ¶ 40. Mr. Williamson explains the VXN Scan system in detail, 18 which involves, in part, a proprietary BitTorrent client that emulates the behavior of a 19 standard BitTorrent client by repeatedly downloading data pieces from peers within a 20 BitTorrent network that are distributing Plaintiff’s movies. Id. ¶¶ 52–55. Mr. Williamson 21 states that other components of VXN Scan retrieve and store identical copies of every 22 network packet that is sent and received by the proprietary BitTorrent client, which 23 includes the IP address, date and time of the network transaction, the port number and 24 BitTorrent client used to accomplish the network transaction. Id. ¶¶ 57–66. It also includes 25 the “Info Hash” associated with the infringing computer file, which reflects the metadata 26 of the underlying .torrent file being shared without authorization. Id. ¶¶ 54, 62. 27 Mr. Williamson further explains that VXN Scan also extracts infringing transaction data 28 1 from each packet capture (“PCAP”) , connects with Maxmind GeoIP2 Precision Services 2 geolocation database to determine the ISP that assigned a particular IP address as well as 3 the city and state the IP address traces to, and summarizes the extracted infringing 4 transaction data in a tabular format. Id. ¶¶ 74–79. 5 Plaintiff also provides the declaration of Patrick Paige, a computer forensics expert 6 retained by Plaintiff to analyze and retain forensic evidence captured by its infringement 7 detection system. ECF No. 4-2, Declaration of Patrick Paige (“Paige Decl.”), ¶¶ 3–9, 12. 8 Mr. Paige states that he reviewed a PCAP from Plaintiff containing information related to 9 a transaction that occurred on March 18, 2021 involving IP address 104.177.119.88. 10 Id. ¶ 16. Mr. Paige attests that in reviewing the PCAP, he was able to confirm that the 11 PCAP is evidence of a recorded transaction with IP address 104.177.119.88 on 12 March 18, 2021 in which the IP address uploaded a piece or pieces of a file corresponding 13 to the Info Hash D96EA595522F63ADD33B6B3CE85F8FC0AE41B1C2 to VXN Scan.3 14 Id. ¶¶ 18–19. 15 Next, Plaintiff provided a declaration from Susan B. Stalzer, an employee of Plaintiff 16 who reviews the content of its motion pictures and who was tasked with “verifying that 17 each infringing file identified as a motion picture owned by Strike 3 on torrent websites 18 was in fact, either identical, strikingly similar or substantially similar to a motion picture 19 in which Strike 3 owns a copyright.” ECF No. 4-2, Declaration of Susan B. Stalzer, 20 (“Stalzer Decl.”), ¶¶ 3, 7. She reviewed contents of digital media files obtained using VXN 21 Scan’s Torrent Collector and Downloader and viewed each side-by-side with Plaintiff’s 22 motion pictures and confirmed they were identical, strikingly similar or substantially 23 similar. Stalzer Decl. ¶¶ 3, 8–10. Ms. Stalzer also states that she used “American Registry 24 25 2 “A PCAP is a computer file containing captured or recorded data transmitted between 26 network devices.” Williamson Decl. ¶ 58. 27 3 This Info Hash number is associated with infringed work number 1 in Plaintiff’s table of infringements by IP address 104.177.119.88. ECF No. 1-2 (Exhibit A to the complaint) 28 1 for Internet Numbers (‘ARIN’) to confirm that the ISP AT&T U-verse did own 2 Defendant’s IP address at the time of the infringements, and hence has the relevant 3 information to identify Doe Defendant.” Id. ¶ 12. 4 Finally, Plaintiff provided a declaration from Emilie Kennedy, Plaintiff’s in-house 5 general counsel, in which Ms. Kennedy states that Plaintiff inputted IP address 6 104.177.119.88 into Maxmind’s Geolocation Database on January 17, 2019 after receiving 7 infringement data from VXN Scan, prior to filing its complaint, and prior to filing the 8 instant motion, and each time, IP address 104.177.119.88 traced to a location in San Diego, 9 California. ECF No. 4-2, Declaration of Emilie Kennedy (“Kennedy Decl.”), ¶¶ 3–7. 10 Because Plaintiff has provided the Court with the unique IP address and the dates 11 and times of connection plus the methodology for obtaining them, the name of the ISP that 12 provided internet access for the user of the identified IP address, and used Maxmind 13 geolocation technology to trace the IP address to this District at or close to the time of the 14 infringement and prior to filing the complaint and this motion, the Court finds that Plaintiff 15 has made a sufficient showing that Doe Defendant with IP address 104.177.119.88 likely 16 resolves to a real person or entity with a physical address in this District. See 17 Criminal Prods., Inc. v. Doe-72.192.163.220, No. 16-CV-2589 WQH (JLB), 2016 WL 18 6822186, at *2–3 (S.D. Cal. Nov. 18, 2016); 808 Holdings, LLC, 2012 WL 12884688, 19 at *4. 20 B. Previous Attempts to Locate Defendant 21 Second, Plaintiff must describe all prior attempts it has made to identify the Doe 22 defendant in a good faith effort to locate and serve them. See Columbia Ins. Co., 185 F.R.D. 23 at 579. Plaintiff states that it “diligently attempted to correlate Defendant’s IP address to 24 Defendant by searching for Defendant’s IP address” on various web search tools; by 25 reviewing sources of authority such as agency websites and informational technology 26 guides for other means of identification; and by consulting with computer investigators and 27 cyber security consultants. ECF No. 4-1 at 14. Plaintiff states that despite these efforts, it 28 is unable to obtain the identity of the alleged infringer because although publicly available 1 data enables Plaintiff to identify the ISP provider, city, and state associated with an IP 2 address, it does not allow Plaintiff to obtain the identity of the subscriber. Id. Plaintiff 3 further states that Defendant’s IP address is “assigned to Defendant by his or her [ISP], 4 which is the only party with the information necessary to identify Defendant by correlating 5 the IP address with John Doe’s identify.” Id. at 7; Paige Decl. ¶ 28. Based on the above, 6 the Court finds that Plaintiff has made a good faith effort to identify and locate the Doe 7 defendant. 8 C. Whether Plaintiff Can Withstand a Motion to Dismiss 9 “[P]laintiff must make some showing that an act giving rise to civil liability actually 10 occurred and that the [pre-service] discovery is aimed at revealing specific identifying 11 features of the person or entity who committed that act.” Columbia Ins. Co. v. 12 seescandy.com, 185 F.R.D. at 580. “[A] plaintiff who claims copyright infringement must 13 show: (1) ownership of a valid copyright; and (2) that the defendant violated the copyright 14 owner’s exclusive rights under the Copyright Act.” Ellison v. Robertson, 357 F.3d 1072, 15 1076 (9th Cir. 2004) (citations omitted). 16 Plaintiff states that it is the exclusive rights holder of the copyrighted works at issue 17 and that they are registered with the United States Copyright Office. See ECF No. 4-1 18 at 16; Compl. at 7; ECF No. 1-2 (Exhibit A to the complaint); Williamson Decl. ¶ 13; 19 Stalzer Decl. ¶ 10. Plaintiff alleges that between November 30, 2018 and March 18, 2021, 20 Defendant infringed Plaintiff’s copyrighted works by downloading, copying, and 21 distributing Plaintiff’s works using the BitTorrent file distribution network. See ECF No. 22 4-1 at 16–17; Compl. at 2, 7; ECF No. 1-2 (Exhibit A to the complaint). Plaintiff further 23 alleges that it did not authorize, permit, or consent to Defendant’s copying or distributing 24 its works. ECF No. 4-1 at 16; Compl. at 7. Accordingly, Plaintiff has alleged the prima 25 facie elements of direct copyright infringement and could withstand a motion to dismiss. 26 See Ellison, 357 F.3d at 1076; Columbia Ins. Co., 185 F.R.D. at 579–80. 27 / / / 28 / / / 1 IV. CONCLUSION 2 Once Plaintiff learns the subscriber's identity, it cannot rely on a bare allegation that 3 he or she is the registered subscriber of an IP address associated with infringing activity to 4 state a plausible claim for direct or contributory copyright infringement. Cobbler Nevada, 5 LLC v. Gonzales, 901 F.3d 1142, 1144 (9th Cir. 2018); Strike 3 Holdings, LLC v. 6 Doe 70.95.181.51, No. 19-cv-73-WQH-WVG, 2019 WL 777416, at *3 (S.D. Cal. 7 Feb. 21, 2019). However, at this point in the litigation, Plaintiff has made an adequate 8 showing of the need to subpoena Defendant’s ISP. See Glacier Films (USA), Inc. v. 9 Turchin, 896 F.3d 1033, 1036 (9th Cir. 2018) (observing that the district court’s case 10 management order permitting “limited discovery from an Internet Service Provider to 11 establish a potential infringer’s identity” was part of a “practical solution” to manage a 12 large number of peer-to-peer copyright infringement cases); Strike 3 Holdings, LLC v. 13 Doe, No. 2:18cv02637-MCE-CKD, 2019 WL 935390, at *4–5 (E.D. Cal. Feb. 26, 2019); 14 Strike 3 Holdings, LLC v. Doe 70.95.181.51, 2019 WL 777416 at *3. Thus, finding good 15 cause, the Court GRANTS Plaintiff’s Ex Parte Application for expedited discovery and 16 ORDERS the following: 17 1. Plaintiff may serve a subpoena pursuant to Federal Rule of Civil 18 Procedure 45 on AT&T U-verse that seeks only the true name and address of the subscriber 19 assigned IP address 104.177.119.88 during the time period of the allegedly infringing 20 conduct described in Plaintiff’s complaint. Plaintiff shall not subpoena additional 21 information. 22 2. Plaintiff may only use the disclosed information for the purpose of protecting 23 its rights in pursuing this litigation. 24 3. Within fourteen calendar days after service of the subpoena, AT&T U-verse 25 shall notify the subscriber that his or her identifying information has been subpoenaed by 26 Plaintiff. The subscriber whose identity has been subpoenaed shall have thirty calendar 27 days from the date of such notice to challenge the disclosure by filing an appropriate 28 pleading with this Court contesting the subpoena. 1 4. If AT&T U-verse wishes to move to quash the subpoena, it shall do so before 2 the return date of the subpoena. The return date of the subpoena must allow for at least 3 forty-five days from service to production. If a motion to quash or other customer challenge 4 is brought, AT&T U-verse shall preserve the information sought by Plaintiff in the 5 subpoena pending resolution of such motion or challenge. 6 5. Plaintiff shall serve a copy of this Order with any subpoena obtained and 7 served pursuant to this Order to AT&T U-verse. AT&T U-verse, in turn, must provide a 8 copy of this Order along with the required notice to the subscriber whose identity is sought 9 pursuant to this Order. 10 6. Once Plaintiff learns the identity of the subscriber(s), Plaintiff shall provide a 11 copy of this Order to that person or persons when Plaintiff first makes contact with the 12 subscriber regarding this case. At that same time, Plaintiff shall also provide the 13 subscriber(s) a copy of the Ninth Circuit's opinion in Cobbler Nevada, LLC v. Gonzales, 14 901 F.3d 1142 (9th Cir. 2018). Once both have been provided to the subscriber(s), counsel 15 for Plaintiff shall immediately file a declaration that confirms these have been provided to 16 the subscriber. 17 7. Plaintiff and AT&T U-verse shall henceforth refer to the subscriber as 18 “John/Jane Doe” and shall redact and omit from all future filings all information that 19 identifies the subscriber personally, unless and until the subscriber becomes a defendant in 20 the above-captioned case. Such identifying information includes the subscriber's name and 21 address. Plaintiff and AT&T U-verse shall refer to the subscriber generically in any filings 22 and attach—under seal—a separate exhibit that includes the subscriber's identifying 23 information.4 24 25 26 27 4 Before filing any document under seal, the parties shall follow and abide by applicable law, including Civil Local Rule 79.2, Section 2.j. of the Electronic Case Filing 28 1 8. The subscriber may initially proceed anonymously as “John/Jane Doe” until 2 ||such time that there is sufficient proof before the Court that the subscriber is connected 3 || with the alleged infringement. 4 9. Plaintiff may not engage in any settlement discussions with the subscriber 5 unless and until the subscriber has been served with the complaint and the documents set 6 || forth in paragraph (6) above. 7 IT IS SO ORDERED. 8 || Dated: May 7, 2021 NO 9 Je ) 10 Honorable Linda Lopez United States Magistrate Judge 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 11