Millennium Tga, Inc. v. Comcast Cable Communications LLC

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
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