Millennium Tga, Inc. v. Comcast Cable Communications LLC , 286 F.R.D. 8 ( 2012 )


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  •                         UNITED STATES DISTRICT COURT
    FOR THE DISTRICT OF COLUMBIA
    Millennium TGA, Inc.,
    Petitioner,
    v.                          Misc. Action No. 12-mc-00150 (RLW)
    Comcast Cable Communications LLC,                 Underlying civil action pending in
    the U.S. District Court for the
    Respondent.                 Southern District of Texas, No. 4:11-
    cv-4501
    MEMORANDUM OPINION
    Before the Court is an appeal by Comcast Cable Communications LLC
    (“Comcast”). Comcast appeals an Order by Magistrate Judge Alan Kay granting in part
    and denying in part a Motion to Compel filed by Millennium TGA, Inc. (“Millennium”).
    For the reasons set forth below, the Court vacates the Order by Magistrate Judge Kay and
    denies the Motion to Compel. However, the Court exercises its discretion to allow
    enforcement of the subpoena in a modified form.
    I. Procedural History
    This matter is before this Court after a rather circuitous journey. Without
    belaboring all of the details, the relevant highlights of the odyssey are summarized below.
    Millennium initially filed a complaint in this judicial district on December 7,
    2011, alleging one count of copyright infringement against 939 John Doe defendants.
    Millennium TGA v. Does 1–939, No. 1:11-cv-02176 (hereinafter “Millennium TGA I”).
    The complaint alleged that the Doe defendants used the BitTorrent protocol to illegally
    download Millennium’s copyrighted work, “Shemale Yum – Jenna Comes a ’Knocking!”
    Plaintiff alleged that the actual names of the Doe defendants were unknown to the
    1
    Plaintiff, and that each of the Doe Defendants was known only by his or her Internet
    Protocol address (“IP address”), which was discovered by observing the IP addresses of
    the computers that entered the “BitTorrent swarm” used to download Plaintiff’s
    copyrighted movie without authorization. The case was randomly assigned to the
    undersigned after its filing.
    On December 16, 2012, merely nine days later, Millennium voluntarily dismissed
    the action without explanation. As Comcast opines, a very likely explanation for
    Millennium’s dismissal – especially in light of Millennium’s subsequent actions – is that
    the undersigned had previously imposed restrictions upon plaintiffs who had brought a
    similar copyright infringement case, and Millennium therefore preferred to litigate before
    what it considered to be a more favorable forum. In that prior case, the undersigned held
    that the applicable venue statute in copyright actions, 
    28 U.S.C. § 1400
    (a), effectively
    requires every defendant to be a resident of the state of the judicial district where the case
    is filed, and thus, there is no good cause to take expedited discovery related to possible
    infringers who are not likely to be residents of the state in which that judicial district is
    located because those possible infringers cannot be prosecuted in that lawsuit. Nu Image,
    Inc., v. Does 1–23,322, 
    799 F. Supp. 2d 34
     (D.D.C. 2011).        In the Millennium TGA I
    complaint, the Plaintiff did not allege that any one specific Doe defendant resided in the
    District of Columbia, let alone that all of the Doe defendants resided here.
    On December 20, 2012, four days after dismissing the action it had filed in the
    District of Columbia, Millennium filed a complaint in the United States District Court for
    the Southern District of Texas, alleging copyright infringement of the same movie.
    Millennium TGA, Inc. v. John Doe, 4:11-cv-4501-VG (hereinafter “Millennium TGA II”).
    2
    However, in Millennium TGA II, the complaint alleged copyright infringement against
    only one Doe defendant, whose internet protocol (“IP”) address was allegedly traced to
    the state of Texas using geolocation technology. The Millennium TGA II complaint also
    alleged a pendent civil conspiracy claim under state law, under the theory that the one
    named Doe defendant had engaged in a conspiracy with 938 unknown “co-conspirators”
    to unlawfully download Plaintiff’s movie. The 939 IP addresses identified in Millennium
    TGA II, the Internet Service Provider (ISP) associated with each IP address, as well as the
    alleged date and time of the downloading activity for each IP address, are exactly the
    same as in Millennium TGA I.
    Shortly after filing Millennium TGA II, the Plaintiff sought leave to take expedited
    discovery, and the court in the Southern District of Texas granted Plaintiff’s motion. See
    Order Granting Plaintiff’s Motion for Leave to Take Expedited Discovery, Millennium
    TGA II, Feb. 9, 2012 [Dkt. No. 6]. Plaintiff subsequently served a subpoena upon
    Comcast seeking the name, address, telephone number and email address for John Doe,
    who is allegedly linked to a Comcast subscriber, as well as for each Comcast subscriber
    who is linked to one of the 938 alleged “co-conspirators” associated with an IP address
    from the Millennium TGA II complaint. 1 That subpoena issued from this court, the
    District of the District of Columbia. Comcast objected to the subpoena, and Plaintiff
    filed the instant petition in this court, seeking to compel Comcast to comply with the
    subpoena. See Motion to Compel Compliance with Subpoena, March 7, 2012 [Dkt. No.
    1]. For ease of reference, the Court will refer to this third matter as Millennium TGA III.
    1      Comcast is only one of several ISPs who allegedly provide Internet service to
    John Doe and the 938 alleged co-conspirators. Later filings indicate that 350 of the
    alleged co-conspirators are linked to Comcast subscribers.
    3
    When Plaintiff filed Millennium TGA III in this court, our local rules required
    Plaintiff to list all “related cases” on the civil cover sheet at the time of filing. See Local
    Rule 40.5(b)(2). Plaintiff listed only one related case, Millennium TGA II (the pending
    case in the Southern District of Texas) in the Notice of Related Case filed with the court.
    Because Plaintiff did not list the prior case filed in this district as a related case,
    Millennium TGA III was randomly assigned, and it was given to Judge Huvelle. 2 Judge
    Huvelle referred the Motion to Compel to Magistrate Judge Kay, and Judge Kay issued
    an order granting the motion in part and denying it in part. Memorandum Order,
    Millennium TGA III, [Dkt No. 15]. Comcast appealed the ruling to Judge Huvelle.
    Due to Plaintiff’s earlier filed action in this court (Millennium TGA I), Comcast
    filed a motion to reassign the case to the undersigned, which Judge Huvelle granted after
    the appeal was filed. Memorandum Opinion and Order, Millennium TGA III, [Dkt No.
    20]. Judge Huvelle easily determined that Millennium TGA I and Millennium TGA III
    were related cases under our local rules 3, describing Plaintiff’s actions as akin to “judge
    shopping.” Id. at 3. This Court could not agree more.
    Accordingly, this matter is now before the undersigned for resolution of the
    appeal of the order of the Magistrate Judge. Thus, let us turn to the merits.
    2      Significantly, counsel failed to sign the Notice of Related Case, as required by the
    Notice and by the federal rules. Dkt No. 2. Given the omission, perhaps this was not a
    coincidental oversight.
    3       See Local Rule 40.5(a)(4) (providing that “cases whether criminal or civil,
    including miscellaneous, shall be deemed related where a case is dismissed, with
    prejudice or without, and a second case is filed involving the same parties and relating to
    the same subject matter.”).
    4
    II. General Standards Governing the Motion to Compel
    Deciding the instant motion to compel by Plaintiff is the functional equivalent of
    deciding a motion to quash by Comcast. See Watts v. S.E.C., 
    482 F.3d 501
    , 508 (D.C.
    Cir. 2007) (describing challenge to agency’s refusal to comply with the subpoena as the
    same as a Rule 45 motion to quash by the agency). Rule 45 specifies that “the issuing
    court must quash or modify a subpoena that . . . requires disclosure of privileged or other
    protected matter, if no exception or waiver applies; . . . or subjects a person to undue
    burden.” Fed. R. Civ. P. 45(c)(3)(A)(iii)-(iv) (emphasis added). The person objecting to
    production has a heavy burden to show that the subpoena should not be enforced.
    Northrop Corp. v. McDonnell Douglas Corp., 
    751 F.2d 395
    , 403 (D.C. Cir. 1984).
    The text of Rule 45 makes quite clear that parties and attorneys who issue
    subpoenas have an affirmative duty to prevent undue burden or expense to the persons
    subject to the subpoena:
    A party or attorney responsible for issuing and serving a subpoena
    must take reasonable steps to avoid imposing undue burden or expense on
    a person subject to the subpoena. The issuing court must enforce this duty
    and impose an appropriate sanction—which may include lost earnings and
    reasonable attorney's fees—on a party or attorney who fails to comply.
    Fed. R. Civ. P. 45(c)(1).
    Accordingly, our circuit court has admonished district courts to be “generally
    sensitive to the costs imposed on third parties” when considering a motion to compel (or
    quash) pursuant to Rule 45, reminding us to consider “whether the discovery sought is
    ‘obtainable from some other source that is more convenient, less burdensome, or less
    expensive.’” Watts, 
    482 F.3d at 508
     (quoting Fed. R. Civ. P. 26(b)(2)(C)(i)). Thus, courts
    5
    have the discretion to limit discovery to prevent undue expense to third parties, even if
    the discovery sought is within the permissible scope of Rule 45 and Rule 26. See Herbert
    v. Lando, 
    441 U.S. 153
    , 177, (1979) (noting that “the discovery provisions, like all of the
    Federal Rules of Civil Procedure, are subject to the injunction of Rule 1 that they “be
    construed to secure the just, speedy, and inexpensive determination of every action” and
    that “ the district courts should not neglect their power to restrict discovery where ‘justice
    requires [protection for] a party or person from . . . undue burden or expense . . . .””)
    (quoting the 1970 Advisory Committee Notes to Fed. R. Civ. P. 26).
    Just as it is improper under Rule 45 to subject non-parties to undue expense, it is
    also improper to subject non-parties to the undue inconvenience of litigating in a distant
    forum. A classic example of such an “abuse of subpoena” is described by a case cited
    approvingly in the Advisory Committee Notes to Rule 45. See Board of Ed. v.
    Farmingdale Classroom Teach. Ass'n, 
    343 N.E.2d 278
     (N.Y. 1975) (cited in the 1991
    Advisory Committee Notes to Fed. R. Civ. P. 45). In Farmingdale, the court held that
    abuse of process occurs when a party manipulates the circumstances to serve process in
    an inconvenient forum for the persons who must respond, even if it is technically legal to
    proceed in that forum, because “such trickery and cunning [is] ‘degrading to an honorable
    profession, and well calculated to bring the administration of justice into reproach and
    contempt. . . .’” 
    Id. at 282
     (quoting Dishaw v. Wadleigh, 
    44 N.Y.S. 207
    , 209 (3d Dep't.
    1897)). 4 For these reasons, our circuit court has held that “nonparty witness territorial
    4      Furthermore, a motion to quash may be justified where the subpoena is a
    transparent attempt to circumvent the law. See, e.g., Laker Airways Ltd. v. Pan American
    World Airways, 
    607 F. Supp. 324
    , 326-27 (S.D.N.Y. 1985) (quashing subpoena served in
    New York, but seeking documents located in the United Kingdom, in a clear attempt to
    6
    convenience” is a valid factor to consider on a motion for a protective order in connection
    with a Rule 45 subpoena. In re Sealed Case, 
    141 F.3d 337
    , 343 (D.C. Cir. 1998).
    III. Application of Standards to Millennium's Subpoena
    Millennium has served a subpoena upon Comcast to obtain the name, address,
    telephone number and email address for the Comcast subscriber whose IP address is
    associated with John Doe, the only defendant identified in the Millennium TGA II
    complaint. Millennium states that it needs this identifying information so that it can
    name that subscriber as a defendant in the lawsuit. In addition, Millennium seeks
    identifying information for each of the 350 Comcast subscribers who is among the 938
    alleged “co-conspirators” associated with an IP address from the Millennium TGA II
    complaint. Millennium states that these individuals are potentially “joint tortfeasers” and
    that it needs to know their identities so that it can investigate the alleged conspiracy and
    potentially add those individuals as defendants in the Millennium TGA II complaint.
    Comcast objected to the subpoena, arguing, among other things, inconvenience of the
    forum, inadequate time for compliance, inadequate assurance of payment, improper
    joinder of the prospective Doe defendants, and lack of personal jurisdiction over the
    prospective Doe defendants. Millennium responded that Comcast was given adequate
    time and compensation for compliance, that Comcast had no standing to raise joinder or
    personal jurisdiction objections on behalf of the current and prospective Doe defendants,
    and that, furthermore, any such objections were premature. Magistrate Judge Kay agreed
    that the joinder and personal jurisdiction objections were premature and overruled all of
    Comcast's other objections, except with respect to inadequate time for compliance.
    circumvent the requirements of the Hague Convention on Taking of Evidence Abroad in
    Civil or Commercial Matters).
    7
    As set forth above, the Plaintiff in this case had an affirmative duty to “take
    reasonable steps to avoid imposing undue burden or expense on [the] person[s] subject to
    the subpoena. . . .” Fed. R. Civ. P. 45(c)(1). Accordingly, preventing undue burden
    resulting from “nonparty territorial inconvenience” is a factor that is required to be
    considered by the district court. In re Sealed Case, 
    141 F.3d at 343
    . Indeed, the burden
    and inconvenience not just to Comcast, but also to the third-party Comcast subscribers, is
    a relevant consideration, since those subscribers have a privacy interest in the information
    sought by Millennium. The district court has an obligation to allow third parties to be
    heard when their privacy or other rights may be affected by enforcement of the subpoena.
    See, e.g., In re Subpoena Duces Tecum Issued to Commodity Futures Trading Com'n, 
    439 F.3d 740
    , 742-49 (D.C. Cir. 2006) (court considered privilege objections of WD Energy,
    whose documents were in possession of the government, even though the subpoena was
    served upon the government, not WD Energy, and even though the government
    interposed no objection with respect to the production of WD Energy's documents);
    Boeing Airplane Co. v. Coggeshall, 
    280 F.2d 654
    , 662 (D.C. Cir. 1960) (district court was
    required to conduct further proceedings as necessary to protect the rights of Boeing's
    competitors, even though they were not before the court, because proprietary information
    belonging to those competitors could potentially be disclosed in response to the
    subpoena).
    Comcast pointed out in its opposition to the Motion to Compel that of the 351
    Comcast subscribers whose personal identifying information is sought, only three reside
    in the District of Columbia. [Dkt No. 7 at 2]. The Plaintiff has not directly responded to
    Comcast's arguments about the inconvenience of this forum for issuing a subpoena
    8
    affecting the rights of non-parties residing outside of the District of Columbia; instead,
    Plaintiff has simply made the vague assertion that it brings lawsuits where defendants
    “are likely to be located.” [Dkt. No. 11 at 7-8]. There is no rhyme or reason as to why
    the rights of all the 351 subscribers should be heard and adjudicated in the District of
    Columbia. The complaint alleges that Plaintiff is organized under the laws of the State of
    Hawaii (with its principal place of business in Los Angeles) and that the only named Doe
    defendant resides in Texas. 348 of the 351 Comcast subscribers whose personal
    identifying information is sought – including the only defendant – reside somewhere
    other than the District of Columbia. Thus, there is nothing in the record showing why
    this forum was appropriate to issue a subpoena for personal identifying information for
    all 351 Comcast subscribers. Engaging in “one stop shopping” in the District of
    Columbia for the personal identifying information for all Comcast subscribers may be
    convenient, for whatever reason, to the Plaintiff. Nonetheless, this approach hardly
    demonstrates compliance with the Plaintiff's affirmative duty pursuant to Rule 45 to take
    “reasonable steps” to avoid undue burden and territorial inconvenience to the 348 (among
    the 351 total) subscribers residing outside of the District of Columbia. The court below,
    following Plaintiff's lead, also gave inadequate consideration to the issue of nonparty
    burden and territorial inconvenience, an error of law requiring reversal. See Fed. R. Civ.
    P. 72(a); Local Rule 72.2(c).
    The anomalies in the present circumstances are many. The only defendant, John
    Doe, resides in Texas; yet he or she will have to file and litigate any objections in the
    District of Columbia. Experience has shown that many of the subscribers are laypersons
    without legal background, and that most will not have counsel and will therefore appear
    9
    in propria persona. Given that, it is very important that these subscribers are not subject
    to litigating in an arbitrarily-selected forum that is hundreds, or even thousands, of miles
    away from their residences. Forcing the Comcast subscribers to litigate their objections
    in a distant forum is completely unnecessary, since the Plaintiff can serve a subpoena
    upon Comcast in any judicial district where Comcast subscribers reside.
    The situation is even more burdensome for the nonparty subscribers because of an
    error committed by the Plaintiff. The order granting expedited discovery contained
    language, which was proposed and drafted by the Plaintiff, stating that “[s]ubscribers
    shall have thirty (30) days from the date of notice of the subpoena upon them to file any
    motions in this Court to contest the subpoena. If the thirty-day period lapses without a
    contest, the ISP will have ten (10) day [sic] thereafter to produce the information in
    response to the subpoena to Plaintiff.” See Order Granting Plaintiff’s Motion for Leave
    to Take Expedited Discovery at ¶ 5, Millennium TGA II, Feb. 9, 2012 [Dkt. No. 6]
    (emphasis added). Thus, the discovery order from the Texas court purported to set terms
    and conditions for compliance with any future subpoena, and it even specified that
    objections were required to be filed in Texas, rather than with the court from which any
    subpoena issued. The order has caused considerable confusion, as over a dozen ISP
    subscribers have followed the mandate of the Order and filed letters, objections, motions
    for protective orders and motions to quash in the Texas court. See Millennium TGA II,
    Dkt Nos. 10, 12, 14, 15, 17, 20, 22, 27, 31, 32, 33, 35, 36, 38, 40, 41. 5 In addition, many
    5        One such objection attached a letter from Comcast to the ISP subscriber, in
    which Comcast advises the subscriber that if s/he intends to object, then s/he must file
    “something with both the Southern District of Texas and the District of Columbia. . . .”
    Millennium TGA II, Dkt No. 15. This is an understandable directive from Comcast, given
    the language in the Texas order and the operation of Rule 45.
    10
    of the affected Comcast subscribers have filed objections in this Court. Thus, the
    Plaintiffs have created a situation where motions to quash are being filed in two
    jurisdictions simultaneously, effectively doubling the burden on the nonparty
    subscribers. 6 This doubly burdensome situation is also improper, because it is well
    settled that “only the issuing court has the power to act on its subpoenas.” In re Sealed
    Case, 
    141 F.3d at 341
     (analyzing the language and context of Rule 45, relevant caselaw
    and the Advisory Committee Notes to Rule 45); accord In re Digital Equipment Corp.,
    
    949 F.2d 228
    , 231 (8th Cir. 1991) (district court where underlying action was pending did
    not have jurisdiction to rule on objections made to deposition subpoenas obtained from
    district court in another district). Despite the confusion and multiple objections filed by
    Comcast subscribers in the Texas court, it appears that the Plaintiff has made no effort to
    correct the erroneous language (that it proposed) in the Texas discovery order. The Court
    fails to see how Plaintiff's careless action (and inaction) are consistent with its affirmative
    obligation to to take “reasonable steps” to avoid undue burden and territorial
    inconvenience to the persons affected by the subpoena.
    Based on this record, this Court would be justified in denying the Motion to
    Compel in its entirety based on the undue burden and territorial inconvenience to the
    Comcast subscribers (at least until the erroneous Texas discovery order and the confusion
    it has caused has been corrected). However, the Court is mindful of the efforts expended
    to date by Plaintiff, as well as Plaintiff's need and desire to prosecute any potentially
    viable claims of copyright infringement and will therefore exercise its discretion to
    enforce the subpoena in a modified form.
    6       Indeed, the Texas court has ruled upon (by denying) at least two such motions to
    quash. See Millennium TGA II, Dkt Nos. 16, 30.
    11
    The Court will deny the request for identifying information for the Comcast
    subscribers. As to Doe, the only named defendant, he or she is linked to a Comcast
    subscriber who resides in Texas. It is unduly burdensome to force that subscriber to
    travel over 1000 miles to the District of Columbia to protect his or her rights, particularly
    when the case is pending in Texas and Comcast can be served with a subpoena in Texas.
    As to the 350 Comcast subscribers who are linked to alleged “co-conspirators” of
    Doe, the Court also denies the request for identifying information as unduly burdensome.
    The Fourth Circuit, joining other courts, has recently held that a state law civil conspiracy
    claim is preempted by the federal Copyright Act. Tire Eng’g & Distrib’n, LLC v.
    Shandong Linglong Rubber Co., Nos. 10-2271, 10-2273, 10-2321, 
    2012 WL 2036971
    *15 (4th Cir. June 6, 2012); accord Gary Friedrich Enters., LLC v. Marvel Enters., Inc.,
    
    713 F. Supp. 2d 215
    , 229 (S.D.N.Y. 2010); Tegg Corp. v. Beckstrom Elec. Co., 
    650 F. Supp. 2d 413
    , 423-428 (W.D. Pa. 2008); Higher Gear Group, Inc. v. Rockenbach
    Chevrolet Sales, Inc., 
    223 F. Supp. 2d 953
    , 960 (N.D. Ill. 2002); Hoey v. Dexel Sys.
    Corp., 
    716 F. Supp. 222
    , 224 (E.D. Va. 1989) ; Aqua Bay Concepts Inc. v. Grosse Point
    Board of Realtors, 
    24 U.S.P.Q.2d 1372
    , 1376 (E.D. Mich. 1992); see also Pacific Century
    International, Ltd. v. Does 1–37, --- F.Supp.2d ----, 
    2012 WL 1072312
     *4 (N.D. Ill. May
    21, 2012) (ruling that plaintiffs in BitTorrent copyright infringement action had not, and
    could not, plausibly plead facts establishing an agreement, a required element of the civil
    conspiracy claim). If the civil conspiracy claim is invalid, there is no good cause for
    discovery related to the alleged co-conspirators. As our circuit court has explained, “[t]he
    federal courts are not free-standing investigative bodies whose coercive power may be
    brought to bear at will in demanding documents from others. Rather, the discovery
    12
    devices in federal court stand available to facilitate the resolution of actions cognizable in
    federal court.” Houston Business Journal, Inc. v. Office of Comptroller of Currency,
    U.S. Dept. of Treasury, 
    86 F.3d 1208
    , 1213 (D.C. Cir. 1996) (emphasis added) 7; see also
    Nu Image, 
    799 F. Supp. 2d at 36-37
    .
    The burden to nonparty subscribers should not be ignored merely due to the fact
    that IP addresses associated with copyright infringement has allegedly been linked to
    their Internet accounts. As one court recently observed, “although the complaints state
    that IP addresses are assigned to 'devices' and thus by discovering the individual
    associated with that IP address will reveal 'defendants' true identity,' this is unlikely to be
    the case. Most, if not all, of the IP addresses will actually reflect a wireless router or
    other networking device, meaning that while the ISPs will provide the name of its
    7         As to any potential Doe defendants linked to Comcast subscribers residing
    outside of Texas, it is also unlikely that Plaintiff can prosecute a copyright infringement
    claim against them in the Millennium TGA II lawsuit. The Fifth Circuit has held that the
    copyright venue statute is a “special venue statute,” and thus a copyright case “may be
    brought only in the district where the defendant ‘resides or may be found.’” Time, Inc. v.
    Manning, 
    366 F.2d 690
    , 696 (5th Cir. 1966) (quoting 
    28 U.S.C. § 1400
    (a)). In addition,
    the Fifth Circuit has held that a Texas federal court does not have personal jurisdiction
    over a copyright infringement case solely because the alleged infringer had contacts with
    Texas, where “the merits of the copyright question” had no relationship with Texas. Ham
    v. La Cienega Music Co., 
    4 F.3d 413
    , 416 (5th Cir.1993); see also Healix Infusion
    Therapy, Inc. v. HHI Infusion Services, No. H-09-3440, 
    2010 WL 2277389
    , *4 (S.D. Tex.
    June 3, 2010) (personal jurisdiction was lacking in Texas where there was no showing
    that the defendant directed any specific acts towards Texas); Action Tapes v. Weaver, No.
    3:05-CV-1693-H, 
    2005 WL 3199706
    , at *3 (N.D. Tex. Nov. 23, 2005) (“absent other
    factors, an individual is not made subject to personal jurisdiction in the Northern District
    of Texas for alleged copyright infringement by virtue of an eBay auction transaction
    conducted with a Dallas resident”); LCW Automotive Corp. v. Restivo Enterprises, No.
    SA-04-CA-0361-XR, 
    2004 WL 2203440
    , at *7 (W.D. Tex. Sept. 24, 2004) (no personal
    jurisdiction in copyright infringement action brought in Texas merely because plaintiff
    was a Texas corporation and defendant, a California corporation, allegedly copied
    photographs and text from plaintiff’s website); Sefton v. Jew, 
    201 F. Supp. 2d 730
    , 742-
    44 (W.D. Tex. 2001) (no personal jurisdiction over California resident in copyright
    infringement case merely because Plaintiff resided in Texas and the alleged infringement
    inflicted financial harm upon a Texas resident).
    13
    subscriber, the alleged infringer could be the subscriber, a member of his or her family, an
    employee, invitee, neighbor or interloper.” In re BitTorrent Adult Film Copyright
    Infringement Cases, Nos. 11-3995, 12-1147, 12-1150, 12-1154, 
    2012 WL 1570765
     * 4-5
    (E.D.N.Y. May 1, 2012) (and cases cited therein). Plaintiff's counsel in the preceding
    case (who do not represent the Plaintiff in this action) conceded that a substantial
    percentage of the Internet subscribers linked to the IP addresses used in BitTorrent
    downloading are not actually liable for copyright infringement. 
    Id.
    The burden to nonparty subscribers is also due serious consideration because of
    what is likely to transpire once Plaintiff's counsel obtains the identifying information of
    the subscribers. A complaint recently filed in the Northern District of California
    describes and attaches actual correspondence that was allegedly sent by counsel
    representing the Plaintiff in the matter before this Court. See Complaint [Dkt. No. 1],
    Abrahams v. Hard Drive Productions, Inc., No. 3:12-1006 (N.D. Cal. filed Feb. 28,
    2012). The Court has reviewed the pleadings in that matter and takes judicial notice of
    their contents. In the Abrahams matter, the present counsel sent the subscriber a
    settlement demand letter for $3400 and an unsigned memorandum containing a purported
    legal analysis of why asserting certain defenses to the copyright infringement action
    would be futile. 8 
    Id.
     at Exhs. A & B. The subscriber was also sent a “document hold”
    letter demanding that he not delete any Internet history, files or emails on his computer,
    that he not delete, install or update any software program on his computer, and even that
    8         The purported legal analysis is incomplete and slanted, to say the least – the
    memo essentially asserts that an Internet subscriber has a duty to know of any infringing
    activity that passes through her Internet router, and that anything less is “willful
    blindness” that subjects the subscriber to liability for contributory copyright
    infringement, a rather dubious proposition.
    14
    he not delete any voicemail messages or data on his cell phones or Personal Digital
    Assistant devices. 
    Id.
     at Ex. D. Plaintiff’s counsel even warned of sanctions and civil
    liability if spoliation were to occur. 
    Id.
     The potential burden of such a data preservation
    demand takes greater significance when the record in this case indicates that the lawyers
    representing Plaintiff in this case commonly bring these BitTorrent copyright actions,
    seek identifying information, keep the case pending for several months, and then never
    prosecute the lawsuit against those subscribers who do not settle with them. 9 [Dkt No. 7
    at 15-16]. Given the intimidating tactics and oppressive demands made by Plaintiff's
    counsel in other cases, it is particularly appropriate to require the Plaintiff to proceed
    according to the federal rules and only allow discovery related to valid claims that can
    and actually will be prosecuted in the federal court where the claims have been filed.
    Nonetheless, the Court is sympathetic to Plaintiff's desire to learn the location of
    potential infringers of its copyrighted material in an efficient fashion, and this Court
    seeks to facilitate those efforts in a manner permissible under the federal rules. Comcast
    has done a preliminary analysis that establishes the location of each of the 351 IP
    addresses of Comcast subscribers identified in the subpoena. [Dkt No. 7 at 6]. Thus,
    Comcast has the ability to, without undue burden, verify the preliminary analysis and
    9        Based on the reports of unduly burdensome actions and harassing
    communications from some lawyers prosecuting these cases, courts have sometimes
    imposed protective orders and regulated the communications with Internet subscribers
    whose personal identifying information is sought in these BitTorrent copyright actions.
    See, e.g. Digital Sin, Inc. v. Does 1-27, 
    2012 WL 2036035
     (S.D.N.Y. June 6, 2012)
    (refusing disclosure of email addresses and telephone numbers, and requiring specific and
    detailed disclosures to subscribers advising them of their rights and how to object to
    disclosure of their identifying information to the plaintiff); Malibu Media, LLC v. Does
    1-5, 
    2012 WL 2001968
     (S.D.N.Y. June 1, 2012) (refusing disclosure of telephone
    numbers of subscribers due to potential for harassing phone calls from plaintiff's
    counsel).
    15
    provide the city and state of residence for the subscriber associated with each of the 351
    requested IP addresses. This information can be turned over to the Plaintiff without
    providing notice to the subscribers, since providing the city and state, without more, is
    not providing personally identifying information as to any subscriber. See 
    47 U.S.C. § 551
    (a)(2) (“personally identifiable information” pursuant to the Cable Act does not
    include information that “does not identify particular persons”); see also Scofield v.
    Telecable of Overland Park, Inc., 
    973 F.2d 874
    , 876 n2. (10th Cir. 1992) (construing
    statute). The Plaintiff can then bring an action against the John Does linked to each of
    those 351 Comcast subscribers in each of the judicial districts where they reside, and
    Plaintiff can then serve a subpoena upon Comcast to obtain the identifying information
    for any subscriber in each of the judicial districts where the subscribers reside (which is
    also where any action against any Doe defendant linked to any particular subscriber
    would be pending). Such a procedure complies with the admonition of our circuit court
    to consider “whether the discovery sought is ‘obtainable from some other source that is
    more convenient, less burdensome, or less expensive.’” Watts, 
    482 F.3d at 508
     (quoting
    Fed. R. Civ. P. 26(b)(2)(C)(i)).
    This relief is appropriate because the federal courts, and its subpoena power, are
    not to be used to gather information that is only relevant to invalid claims, for that is
    tantamount to a fishing expedition. Nor is it appropriate to employ the subpoena power
    of the federal courts to unduly burden nonparties with the expense and obligation of
    protecting their rights in a forum that is arbitrarily chosen and decidedly inconvenient.
    For the foregoing reasons, Millennium’s Motion to Compel is denied. It is hereby
    ordered that by no later than thirty (30) days from the issuance of this Opinion, Comcast
    16
    shall provide the city and state of residence for the subscriber associated with each of the
    351 IP addresses requested in Millennium’s subpoena. It is further ordered that Comcast
    preserve any data related to the 351 IP addresses for a period of at least 180 days from
    date of this Opinion in case Plaintiff seeks to serve a subsequent subpoena.
    An order accompanies this Memorandum.
    Digitally signed by Judge Robert L.
    Wilkins
    SO ORDERED.                                                    DN: cn=Judge Robert L. Wilkins,
    o=U.S. District Court, ou=Chambers
    Date: June 25, 2012                                            of Honorable Robert L. Wilkins,
    email=RW@dc.uscourt.gov, c=US
    Date: 2012.06.25 18:22:44 -04'00'
    ROBERT L. WILKINS
    United States District Judge
    17
    

Document Info

Docket Number: Misc. No. 2012-0150

Citation Numbers: 286 F.R.D. 8, 2012 U.S. Dist. LEXIS 88369, 2012 WL 2371426

Judges: Judge Robert L. Wilkins

Filed Date: 6/25/2012

Precedential Status: Precedential

Modified Date: 11/5/2024

Authorities (18)

Gary Friedrich Enterprises, LLC v. Marvel Enterprises, Inc. , 713 F. Supp. 2d 215 ( 2010 )

Tegg Corp. v. Beckstrom Electric Co. , 650 F. Supp. 2d 413 ( 2008 )

Sefton v. Jew , 201 F. Supp. 2d 730 ( 2001 )

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Time, Inc. v. Frank Manning , 366 F.2d 690 ( 1966 )

Laker Airways Ltd. v. Pan American World Airways , 607 F. Supp. 324 ( 1985 )

Bill Ham D/B/A Hamstein Music Company v. La Cienega Music ... , 4 F.3d 413 ( 1993 )

In Re: Sealed Case , 141 F.3d 337 ( 1998 )

Houston Business Journal, Inc. And Dee Gill, Individually v.... , 86 F.3d 1208 ( 1996 )

Herbert v. Lando , 99 S. Ct. 1635 ( 1979 )

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