Need information about finding out who infringed your copyright? This video may provide some guidance.
Copyright owners of video and photos may find their works have been copied and posted somewhere else online and therefore need to take action for copyright infringement. But the first challenge may be to identify who the unknown defendant is. This video discusses (1) filing a copyright infringement case in federal court, (2) showing good cause for early discovery to identify the unknown alleged infringer, and (3) sending subpoenas. Finding out who infringed copyright can be a difficult task.
The federal courts have exclusive jurisdiction for copyright infringement cases. That means a state court will not be able to hear a copyright infringement matter. A copyright infringement case filed in state court will get dismissed because state courts cannot hear cases that are exclusively the subject of federal jurisdiction.
When a party has filed suit, it usually knows who the defendant is. But sometimes it is necessary to file suits against “John Doe” defendants. In the online copyright infringement context, the copyright owner will need to take early discovery. This requires persuading the federal judge that good cause exists for taking early discovery. To show good cause, a party will need to show that an actual person has infringed, that it has taken as many steps possible to unmask the anonymous copyright infringer, and that its copyright infringement case is strong enough to survive a motion for summary judgment.
Once these things are shown, the court will allow the plaintiff to send subpoenas to the host of the infringing content and to the internet service providers associated with the IP address that uploaded the copyright infringing content. Then, if the plaintiff is successful in unmasking the unknown defendant, the copyright infringement case can actually begin .
A recent case addressed the problem of identifying unknown online copyright infringers. Plaintiff sued some unknown “John Doe” defendants who infringed plaintiff’s copyrights. To keep the lawsuit moving forward, plaintiff needed to serve the complaint on the defendants. But this presented a challenge, since plaintiff did not know to whom it should deliver the documents. So plaintiff filed a motion with the court, asking for permission to send interrogatories and to take depositions that would help unmask the anonymous infringers. Plaintiffs sought to get information from parties including PayPal, Cloudflare and various domain name registrars. The court’s response provides guidance to parties seeking to learn the identities of unknown parties.
To identify unknown online copyright infringers: early discovery
The rules of procedure in federal court do not permit discovery requests until the parties have had an initial conference with each other. But they cannot have that conference if the defendant is unknown. So the plaintiff needs to send discovery requests earlier than what the rules generally allow. It needs the court’s permission to do so.
A court will not permit early discovery in every instance. But courts have made exceptions, permitting limited discovery after a plaintiff files the complaint to permit the plaintiff to learn the identifying facts necessary to permit service on the defendant. Courts allow these requests upon a showing of good cause.
What constitutes good cause for early discovery?
This court applied the three part test for good cause set out more than 20 years ago in the case of Columbia Ins. Co. v. Seescandy.com, 185 F.R.D. 573 (N.D. Cal. 1999). The party seeking early discovery should be able to:
Identify the missing party with sufficient specificity such that the court can determine that the defendant is a real person or entity who could be sued in federal court;
Identify all previous steps taken to locate the elusive defendant; and
Establish to the court’s satisfaction that the suit against defendant could withstand a motion to dismiss.
Early discovery was appropriate in this case
Under the first prong of the test, the court found that plaintiff identified the missing parties with as much clarity as possible. Plaintiff stated that those missing parties were persons or entities, and that those parties had been observed and documented as infringing on plaintiff’s copyrights. Thus, as real persons or entities, those Doe parties could be sued in federal court.
As for the second prong, the only information plaintiff had regarding the defendants was the existence of accounts relating to the operations of the defendants’ websites. Therefore, there were no other measures plaintiff could take to identify the defendants other than to obtain their identifying information from the parties from whom it was sought.
Finally, on the third prong, for identifying unknown copyright infingers, the court found that plaintiff had pled the required elements of direct and contributory copyright infringement. Plaintiff claimed (1) it owned and had registered the copyrighted work at issue in the case; (2) defendants knew of the infringing activity and were conscious of their infringement; and (3) defendants actively participated in this infringement by inducing, causing and contributing to the infringement of plaintiff’s copyrighted work. Since plaintiff had alleged each of these elements properly, this cause of action could withstand a motion to dismiss.
MG Premium Ltd. v. Does, 2020 WL 1675741 (W.D. Wash. April 6, 2020)
Although the author of a work owns the copyright the moment that work is created, Section 411 of the Copyright Act (17 U.S.C. 411) provides that the copyright owner must register the copyright before the owner can bring suit for infringement. If there is no valid registration certificate, the lawsuit cannot move forward. A copyright registration certificate that is invalid can cause problems.
In a recent case from the Ninth Circuit, the defendant challenged the validity of the plaintiff’s registration certificate, and the lower court dismissed the matter on summary judgment. Plaintiff sought review with the Ninth Circuit. On appeal, the court affirmed the summary judgment.
The appellate court agreed with the district court that plaintiff’s certificate of registration was invalid because:
There was no genuine dispute that plaintiff knew that it included inaccurate information in its copyright application. Plaintiff falsely represented that the copy of its website it submitted was not how it looked on the publication date listed in the application.
The Register of Copyrights told the court that it would have refused registration had it known about the inaccurate information.
Because Plaintiff’s certificate of registration was invalid, plaintiff failed to satisfy the registration precondition under Section 411 to bring a copyright infringement claim.
SellPoolSuppliesonline.com, LLC v. Ugly Pools Arizona, Inc., 2020 WL 1527774 (9th Cir. March 31, 2020)
Plaintiffs provide “verification and security services for blockchain-based cryptocurrencies.” Grant County, Washington decided to charge plaintiffs and others in “evolving industries” more for electricity. Plaintiffs sued and tried to get an injunction against the rate increase.
The lower court denied the preliminary injunction. Plaintiffs sought review with the Ninth Circuit. On appeal, the court affirmed the denial of the preliminary injunction.
It held that simple monetary harm would not constitute an immediate threat of irreparable harm that would be appropriately remedied by an injunction. Although a legitimate threat that a company might face bankruptcy or be driven out of business may constitute irreparable harm, in this case, plaintiffs failed to introduce competent evidence that they would be driven out of business because of the increased rates.
Blocktree Propterties, LLC. v. Pub. Utility Dist. No. 2 of Grant County, 2019 WL 5704281 (9th Cir. November 5, 2019)
App terms of service said that arbitrator – not court – should determine whether arbitration is proper.
The family of a man killed on a Lime scooter sued Lime over the man’s death. Lime looked to its user agreement – which provided that disputes are subject to arbitration – and asked the court to compel such arbitration. The court granted the motion.
The court found that the agreement structure was not a clickwrap or browsewrap, but instead a “sign-in wrap”. Underneath the Facebook button one can use to sign up within the Lime app was a notice that stated, “[b]y singing up, I confirm that I am at least 18 years old, and that I have read and agreed to Lime’s User Agreement & Terms of Service.” The words “User Agreement” and “Terms of Service” were in darker boldface than the rest of the sentence, and they provided a hyperlink to Lime’s user agreement.
If found that a the hyperlink to the user agreement on Lime’s sign-up screen was reasonably conspicuous and placed the deceased on notice of the user agreement. The sign-up screen was visible on one page, and the hyperlink was in close proximity to the two sign-up buttons. Moreover, the notice was legible, and the hyperlinked words “User Agreement & Terms of Service” were in dark, bold font, making them stand out from both the white screen and the surrounding gray text. Based on these circumstances, the court found, a “reasonably prudent smartphone user” would understand that by signing up for Lime, he or she was assenting to the user agreement.
Further, the court found that compelling arbitration – even for purposes of determining the question of whether arbitration was what the parties had agreed to – was appropriate. By stating that the arbitration provider’s rules would govern the arbitration proceedings, the parties “clearly and unmistakably” reserved the determination of arbitrability for the arbitrator.
Phillips v. Neutron Holdings, Inc., No. 18-3382, 2019 WL 4861435 (N.D. Texas, October 2, 2019)
Facebook’s ability to decisively police the integrity of its platforms was without question a pressing public interest.
Plaintiffs provided software-as-a-service to help their clients locate social media content, gain approval to use that content, and then re-purpose it in the clients’ own advertising and marketing activities.
Previously, plaintiffs had operated in partnership with Facebook, whereby plaintiffs had access to the Facebook Open Graph API. In late August 2019 (a few weeks after a Business Insider article identified plaintiffs as misusing the Instagram platform) Facebook terminated the marketing partnership and access to the API.
After efforts to informally resolve the situation failed, plaintiffs, perhaps emboldened by the Ninth Circuit’s recent decision in hiQ v. LinkedIn, sued Facebook and Instagram asserting a number of claims, including breach of contract and tortious interference, and also sought a declaratory judgment that plaintiffs did not violate the Computer Fraud and Abuse Act. Plaintiffs sought a temporary restraining order that would have restored access to the platforms pending the case’s determination on the merits. But the court denied the motion.
No irreparable harm likely
The court rejected plaintiffs’ argument that they would suffer irreparable harm if access was not restored. It found that plaintiffs’ allegations of imminent harms shared a common fatal flaw in that they merely alleged speculative harm – they did not sufficiently demonstrate that irreparable harm was likely to occur.
Plaintiffs did establish for purposes of this motion that much (though not all) of the work they conducted for clients before losing API access involved Facebook. But the court found that plaintiffs had not sufficiently shown that they would actually lose current customers, or fail to acquire new prospective customers, if access were not restored.
Further, the court found that plaintiffs’ CEO’s statement that “this will soon reach a tipping point where [plaintiffs] can no longer operate” was not specific enough to demonstrate there was irreparable harm. “The extraordinary relief of a pre-adjudicatory injunction demands more precision with respect to when irreparable harm will occur than ‘soon.’ Such vague statements are insufficient evidence to show a threat of extinction.”
Not in the public’s interest
The court also found that the “public’s interest caution[ed] against issuing injunctive relief at this time.”
Plaintiffs argued that the public interest favored an injunction because one would prevent the imminent destruction of plaintiffs’ business, preserve employee jobs, and generally allow plaintiffs to continue operating. Additionally, they argued that the public interest would be served by enjoining defendants’ wrongful conduct.
Defendants argued that the public had an interest in allowing Facebook to exclude those who act impermissibly on its platform and jeopardize user privacy by, in this instance, automating data collection and scraping content en masse. Defendants argued that the public has an interest in allowing them latitude to enforce rules preventing abuse of their platforms.
The court decided that awarding injunctive relief at this stage would compel Facebook to permit a suspected abuser of its platform and its users’ privacy to continue to access its platform and users’ data for weeks longer, until a preliminary injunction motion could be resolved. Moreover, as precedent within Facebook’s policy-setting organization and potentially with other courts, issuing an injunction at this stage could handicap Facebook’s ability to decisively police its social-media platforms in the first instance. Facebook’s enforcement activities would be compromised if judicial review were expected to precede rather than follow its enforcement actions.
And although the public certainly has some interest in avoiding the dissolution of companies and the accompanying loss of employment, the court found that Facebook’s ability to decisively police the integrity of its platforms was without question a pressing public interest. In particular, the court noted, the public has a strong interest in the integrity of Facebook’s platforms, policing of those platforms for abuses, and protection of users’ privacy.
Stackla, Inc. v. Facebook Inc., No. 19-5849, 2019 WL 4738288 (N.D. Cal., September 27, 2019)
Plaintiff sued some unknown defendants for breach of contract and violations of the Computer Fraud and Abuse Act, based on the defendants’ deceptive conduct that tricked some internet users into signing up for plaintiff’s paid services. The unknown defendants would receive affiliate commissions from operating this scheme. This caused reputation problems for plaintiff.
Plaintiff sought early discovery to ascertain the identities of the unknown defendants. The court denied the motion.
The Federal Rules of Civil Procedure do not permit a party to seek discovery from the adverse parties in the case until all parties have conducted an initial conference under Rule 26(f). But when the defendants are unknown, that conference cannot take place. So the plaintiff needs to conduct discovery to find out who they are. In situations like these, for the required early discovery to occur and the unknown defendants to be identified (so that the conference can take place), the court must enter an order permitting early discovery.
A court can authorize early discovery to identify unknown defendants if there is good cause. In determining whether there is good cause, courts consider whether the plaintiff:
can identify the missing party with sufficient specificity such that the court can determine that defendant is a real person or entity who could be sued in federal court;
has identified all previous steps taken to locate the elusive defendant;
has articulated claims against defendant that would withstand a motion to dismiss; and
has demonstrated that there is a reasonable likelihood of being able to identify the defendant through discovery such that service of process would be possible.
In this case, the court found that plaintiff failed to identify the defendants with sufficient specificity, and did not demonstrate that each defendant was a real person or entity who would be subject to jurisdiction in the Northern District of California. Plaintiff had not explained why defendants would be subject to the jurisdiction of the court, as defendants’ activities seemed directed at Argentina, and plaintiff’s harm was felt in Argentina and other parts of Latin America. The only apparent connection defendants had with the Northern District of California was that they used domain name services from California companies. Plaintiff provided no authority to suggest this was sufficient to create jurisdiction.
Plaintiff also failed to explain what steps it had taken to locate defendants. Citing to Columbia Ins. Co. v. seescandy.com, 185 F.R.D. 573 (N.D. Cal. 1999), the court noted that “[t]his element is aimed at ensuring that plaintiffs make a good faith effort to comply with the requirements of service of process and specifically identifying defendants.”
In its motion, plaintiff only stated that there were no more practical measures that would permit it to identify the unknown defendants, but did not identify what measures – if any – were taken. For example, plaintiff was apparently able to identify defendants as affiliates, and that a contract existed, giving rise to legal liability. It was therefore not clear why plaintiff was unable to identify defendants based on the contract.
Binbit Argentina, S.A. v. Does 1-25, No. 19-5384, 2019 WL 4645159 (N.D. Cal., September 24, 2019)
Plaintiff and her twin sister sued her ex-boyfriend and an unknown John Doe accusing them of copyright infringement and other torts such as invasion of privacy. They claimed the defendants posted intimate and nude photos of plaintiffs online without their consent. And defendants had posted one of the plaintiff’s name and other information on social media in connection with the photos.
Arguing that they had a substantial privacy right that outweighed the customary and constitutionally-embedded presumption of openness in judicial proceedings, plaintiffs asked the court for permission to proceed anonymously. But the court denied the motion.
Plaintiffs’ privacy arguments
Plaintiffs had primarily argued that proceeding under their real names would require them to disclose information of the utmost intimacy and that if they were required to attach their names to the litigation, there would be a public record connecting their names to the harm and exploitation they had suffered which could result in even more people viewing the very images that were stolen and disseminated without their consent.
Court: the harm had already been done
The court rejected these arguments. It observed that the photographs had been published on the internet for approximately seven years and had been sent to people they know. Plaintiffs admitted that one of them could be identified in some of the photographs because her face and a distinctive tattoo were visible. And John Doe had already published that plaintiff’s contact information which resulted in her being inundated with phone calls, text messages, emails, and Instagram, Facebook, and Twitter messages.
So in the court’s mind it appeared that that plaintiff’s identity was already known or discoverable. In addition, that plaintiff had obtained copyright registrations for many of the photographs and the copyright registration was a public document that clearly identified her by name.
As for the twin sister, although her identity had not been similarly made public, the court found that “no great stretch [was] required to identify her through public records as [the other plaintiff’s] twin sister.”
Consequently, the court was not persuaded that plaintiffs’ privacy interests outweighed the public’s right of access in judicial proceedings.
M.C. v. Geiger, 2018 WL 6503582 (M.D.Fla. Dec. 11, 2018)
In defending intellectual property claims over video games, defendants’ law firm hired a public relations firm to assist it with “input on legal strategy, including regarding initial pleadings and communications about the case to counteract [plaintiff’s] false and negative statement.” Defendants were allegedly being targeted by negative online attacks by the plaintiff.
During discovery, plaintiff served a subpoena on the hired PR firm, seeking, among other things, all documents relating to the communciations between the PR firm and defendants’ counsel.
Defendants sought to quash the subpoena, arguing the information was protected from disclosure under the attorney-client privilege. The court quashed the subpoena.
It found that because defendants’ counsel (and not defendants themselves) hired the PR firm to provide PR counseling specifically for the purposes of litigation strategy, the attorney-client privilege extended to the communications between the PR firm and defendants’ counsel pertaining to “giving and receiving legal advice about the appropriate response to the lawsuit and making related public statements.”
Specifically, these communications were
confidential communications made
between lawyers and public relation consultants
hired by the lawyers to assist them in dealing with the media in cases or litigation
that were made for the purpose of giving or receiving advice
directed at handling the client’s legal problems that were undeniably protected by the attorney client privilege.
The court similarly found that the attorney work product doctrine extended to the communications exchanged between the PR firm and defendants’ counsel. As could be seen by the privilege log, documents such as a “draft Answer and Counterclaim” and a “draft press release” would contain “the mental impressions, conclusions, opinions, or legal theories of a party’s attorney or other representative concerning the litigation.” Moreover, documents such as a “draft Answer and Counterclaim” and a “draft press release” were “prepared in anticipation of litigation or for trial.” Defendants’ counsel also did not waive their work-product protection when they shared otherwise valid work product (e.g. draft Answers or Counterclaims) with the PR firm for assistance because the communications were intended to be confidential.
Stardock Systems, Inc. v. Reiche, 2018 WL 6259536 (N.D.Cal. Nov. 30, 2018)
Plaintiff trademark owner noticed that an unknown party was using plaintiff’s mark to sell email templates online without plaintiff’s authorization. After the unknown infringer’s domain name registrar (the case does not say whether it was also the web host) refused to take down the allegedly infringing content, plaintiff filed suit against the “John Doe” defendant. Since it needed to learn the identity of the defendant to move the case forward, plaintiff asked the court for early discovery that would permit plaintiff to send a subpoena to the registrar that would compel the registrar to identify its customer.
The court granted the motion for leave to take early discovery. It applied the standard set out in OpenMind Solutions, Inc. v. Does 1-39, 2011 WL 4715200 (N.D. Cal. Oct. 7, 2011) (citing Columbia Ins. Co. v. seescandy.com, 185 F.R.D. 578-80 (N.D. Cal. 1999)), which requires that prior to early discovery being permitted, a plaintiff must show:
Plaintiff can identify the missing party with sufficient specificity such that the court can determine that defendant is a real person or entity who could be sued in federal court;
Plaintiff has identified all previous steps taken to locate the elusive defendant;
Plaintiff’s suit against defendant could withstand a motion to dismiss; and
Plaintiff has demonstrated that there is a reasonable likelihood of being able to identify defendant through discovery such that service of process would be possible.
On the first factor, plaintiff had alleged that the Doe defendant owned or was using the specified domain name associated with the offending website to sell email templates using plaintiff’s trademark.
As for the second factor, plaintiff had contacted the domain name registrar, and asked that the information be taken down, but the registrar refused to do so. The domain name alone was not sufficient for plaintiff to identify the Doe defendant, and plaintiff had no other means to identify the Doe defendant besides the registrar’s record which it refused to provide without a subpoena.
Regarding the third factor, plaintiff made the required showing by alleging that it holds a valid trademark for its mark that the Doe defendant used to sell products on the offending website.
And concerning the fourth factor, the plaintiff had alleged that the registrar was the registrar for the domain name associated with the offending website and that it had stated it would pass the complaint information on to the website owner. The court found that plaintiff had thus demonstrated that a subpoena to the registrar should reveal the identity of the Doe defendant.
One should note this court’s willingness to permit early discovery as being in contrast to another court’s recent apparent disdain for a copyright troll plaintiff seeking the identity of an anonymous online infringer.
Marketo, Inc. v. Doe, 2018 WL 6046464 (N.D.Cal. Nov. 19, 2018)
Have questions? Contact
email@example.com (630) 362-7237
Evan Brown is an attorney in Chicago helping clients identify and manage issues with technology development, licensing, copyright, trademarks, domain names, service agreements and other matters involving the internet and new media.
Evan is a partner in the law firm of Much Shelist, P.C. He is an adjunct professor of law at Chicago-Kent College of Law, and is a Domain Name Panelist with the World Intellectual Property Organization (WIPO).