No deposition of account holder allowed until he is named as defendant in BitTorrent copyright case

Hard Drive Productions, Inc. v. Doe, 2012 WL 90412 (E.D. Cal. July 11, 2012)

In a mass copyright infringement suit, plaintiff served a subpoena on an internet service provider and got the identifying information for the account holder suspected of trading a copy of a movie via BitTorrent. The account holder was uncooperative with plaintiff’s offers to settle, and denied downloading the file.

Instead of simply naming the identified account holder as a defendant in the case and proceeding with ordinary discovery, plaintiff asked the court for leave to take “expedited discovery,” namely, to depose the account holder to learn about:

  • the account holder’s involvement with the alleged distribution
  • his computers and network setup
  • his technical savvy
  • other users who may have had access to the computers or network

The court denied plaintiff’s request for leave to engage in the expedited discovery. It found that unlike other copyright cases in which anonymous infringers were identified, the efforts in this case “went far beyond seeking to identify a Doe defendant.” Instead, the court observed, it would be “a full-on deposition during which [the account holder] who plaintiff admits is likely not represented by counsel, may unwarily incriminate himself on the record before he has even been named as a defendant and served with process.”

Court deals blow to anonymous Bittorrent defendants’ efforts to challenge subpoenas

West Coast Productions v. Does 1 – 5,829, — F.Supp.2d —, 2011 WL 2292239 (D.D.C. June 10, 2011)

The judge in one of the well-known mass copyright cases filed by Dunlap, Grubb & Weaver a/k/a U.S. Copyright Group (West Coast Productions v. Does 1 – 5,829) has issued an order denying motions to quash filed by several of the unnamed defendants. Plaintiff had served subpoenas on the ISPs associated with the IP addresses allegedly involved in Bittorrent activity, seeking to learn the identity of those account holders.

The ruling is potentially troubling because the court refused to even consider the arguments presented by those anonymous parties who did not reveal their identity in connection with the motion to quash. Such an approach undermines, and indeed comes close to refusing altogether to recognize any privacy interest that a person may have concerning his or her ISP account information.

The court observed that the Federal Rules of Civil Procedure require that a party must identify himself or herself in the papers filed with the court. In some situations, however, a court may grant a “rare dispensation” of anonymity after taking into account the risk of unfairness to the party seeking anonymity as well as the general presumption of openness in judicial proceedings.

In this case, the court noted that other courts had “uniformly held that the privacy interest in [ISP account] information is minimal and not significant enough to warrant the special dispensation of anonymous filing.”

Absent from the court’s analysis was the potential for harm to defendants who were the subject of these subpoenas but might have the ability to demonstrate (anonymously) that they were not involved. In cases involving adult content, in particular, the harm of being publicly associated with that content — even if the association turns out to be in error — is one that should not be disregarded in this way. Moreover, taking away the ability of an anonymous defendant to challenge his unmasking will encourage extortionate-like behavior on the part of copyright plaintiffs hoping to extract a settlement early in the case. If writing a check is the only way to keep from having to turn one’s name over (and this case pretty much establishes that rule), then more settlements should be expected.

The court went on to reject the arguments in favor of motions to quash filed by John Does who had provided their contact information to the court. The court found that it was premature to rule on any objections based on a lack of personal jurisdiction because the defendants filing the motions had not actually been named as a party. And the court rejected the arguments that the defendants were improperly joined into the action, noting the allegations in the complaint that the IP addresses were involved in a single Bittorrent swarm.

Evan Brown is a Chicago-based attorney practicing technology and intellectual property law. Send email to, call (630) 362-7237, follow on Twitter at @internetcases, and be sure to like Internet Cases on Facebook.

Court allows discovery of competitor’s keyword purchases

Scooter Store, Inc. v., LLC, 2011 WL 2160462 (S.D. Ohio June 1, 2011)

The Scooter Store and a related company sued a competitor for trademark infringement and other causes of action for unfair competition based in part on the competitor’s purchase of keywords such as “scooter store” and “your scooter store” to trigger sponsored advertisements on the web. Defendant moved for summary judgment and also moved for a protective order that would prevent it from having to turn over information to plaintiffs concerning defendant’s purchase of the keywords. The court denied the motion for protective order.

Defendant argued that it should not have to turn over the information because plaintiffs’ trademark claims based on those keywords were without merit, as the words are generic terms for the goods and services plaintiffs provide. Defendant also asserted a need to protect the commercially sensitive nature of information about its keyword purchases.

The court rejected defendant’s arguments, ordering that the discovery be allowed. It held that “whether or not [p]laintiffs’ claims involving these terms survive summary judgment [] has no bearing on whether the discovery [p]laintiffs seek is relevant, particularly viewed in light of a party’s broad rights to discovery under Rule 26.” As for protecting the sensitivity of the information, the court found that such interests could be protected through the process of designating the information confidential, and handled accordingly by the receiving party.

Court shifts half of cost of forensic search to producing party in ediscovery case

[This is a post by Jonathan Rogers. Jon is a licensed attorney in California, with a focus on technology and entertainment law. You can reach him by email at or follow him on Twitter at @jonarogers.]

IWOI, LLC v. Monaco Coach Corporation, N.D. Ill. May 24, 2011

Plaintiff sued claiming breach of warranty and violations of certain state laws against consumer fraud stemming the sale of a motor coach. Plaintiff sought permission to search defendants’ hard drives to locate critical email which appeared to be missing from the original discovery production. Defendants contended that the email was not “reasonably accessible” under Federal Rule of Civil Procedure 26(b)(2)(B) and, therefore, they were under no obligation to produce it.

The court specified that the burden was on the party responding to discovery to identify whether there may be materials responsive to discovery requests that are stored on its system, but because of burden or cost are not reasonably accessible. However, that party cannot simply provide documents which are easily obtained and then assert that they have produced everything that is responsive to the request. If other relevant and responsive documents exist (or may exist), the party must say so and then say why those documents cannot or should not be produced.

Here, the defendants submitted only materials that were quickly accessible on employees’ desktops and made no effort to look further, even when they became aware that there was a possibility that there may be missing documents. A forensic expert asserted that he found the critical email in two separate locations on the computer network: on a local hard drive in an orphaned, but not deleted, storage file and also on a network hard drive that had been manually backed up. The expert concluded that a native Microsoft windows search of defendants’ computers would have uncovered the email and could be undertaken by an individual with no advanced computer knowledge.

The Court did not find the failure to produce the document to be a deliberate act by defendants, but that the document could have been found with minimal effort. It recognized that plaintiff (and the court) expended additional time and effort and incurred significant additional expenses searching for this document. Therefore, the court shifted half of the cost of the electronic discovery search to defendants.

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