Tag: discovery (page 1 of 3)

Finding out who infringed copyright – identifying infringers

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 .

More information: Identifying unknown online copyright infringers: court gives guidance

finding out who infringed copyright

Identifying unknown online copyright infringers: guidance

unmasking online copyright infringers

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)

Related: 

Court denies porn company’s request to unmask anonymous copyright infringers

Serial copyright plaintiff Strike 3 Holdings filed a number of copyright complaints against defendants – known only by their IP addresses – for copyright infringement. Since plaintiff needed to know the identities of the defendants to move forward, it asked the court for leave to seek expedited discovery. In a consolidated matter – addressing a number of complaints – the court denied the motion.

The main reason for denying the motion was that, in the court’s view, as pleaded, plaintiff’s complaints were futile – they did not meet the standard for a motion to dismiss under Rule 12(b)(6).

Further, even if plaintiff had pled a cognizable copyright infringement claim, the court would still have denied the requests for expedited discovery. Good cause for the expedited discovery did not exist because:

  • plaintiff based its complaints on unequivocal affirmative representations of alleged facts that it did not know to be true
  • plaintiff’s subpoenas were misleading and created too great of an opportunity for misidentification of the unknown defendants
  • the linchpin of plaintiff’s good cause argument, that expedited discovery was the only way to stop infringement of its works, was wrong – plaintiff could have sent takedown notices under the Digital Millennium Copyright Act
  • plaintiff had other available means to stop infringement besides suing individual subscribers in thousands of John Doe complaints
  • the deterrent effect of plaintiff’s lawsuits was questionable
  • substantial prejudice may have inured to subscribers who were misidentified; and
  • plaintiff underestimated the substantial interest subscribers had in the constitutionally protected privacy of their subscription information.

On balance, therefore, the court found that the overall administration of justice and the prejudice to subscriber defendants outweighed plaintiff’s interest in expedited discovery.

Strike 3 Holdings, LLC v. Does, 2019 WL 5446239 (D.N.J. October 24, 2019)

Fact that others had access to defendant’s wi-fi was no reason to quash subpoena in copyright case

In a suit against John Doe defendant for copyright infringement arising from defendant’s alleged distribution of plaintiff’s movies via BitTorrent, plaintiff sent a subpoena to Comcast – defendant’s ISP – seeking defendant’s identify.

Defendant moved to quash the subpoena, contending that being the target of the civil action was an undue burden, because there was a substantial likelihood that plaintiff would be unable to establish that defendant was actually the person responsible for the alleged infringement. Defendant also included a letter from his neighbor describing how that neighbor and others had used defendant’s wireless network.

The court denied the motion to quash. It held that even though defendant may turn out to be innocent, at this stage plaintiff was merely seeking to uncover his identity. The fact that other people had access to defendant’s unsecured wi-fi was immaterial. 

Strike 3 Holdings, LLC v. Doe, 2019 WL 1865919 (N.D.Cal. April 25, 2019)

Court takes into consideration defendant’s privacy in BitTorrent copyright infringement case

Frequent copyright plaintiff Strike 3 Holdings filed a motion with the U.S. District Court for the District of Minnesota seeking an order allowing Strike 3 to send a subpoena to Comcast, to learn who owns the account used to allegedly infringe copyright. The Federal Rules of Civil Procedure created a bootstrapping problem or, as the court called it, a Catch-22, for Strike 3 – it was not able to confer with the unknown Doe defendant as required by Rule 26(f) because it could not identify the defendant, but it could not identify defendant without discovery from Comcast.

The court granted Strike 3’s motion for leave to take early discovery, finding that good cause existed for granting the request, and noting:

  • Strike 3 had stated an actionable claim for copyright infringement,
  • The discovery request was specific,
  • There were no alternative means to ascertain defendant’s name and address,
  • Strike 3 had to know defendant’s name and address in order to serve the summons and complaint, and
  • Defendant’s expectation of privacy in his or her name and address was outweighed by Strike 3’s right to use the judicial process to pursue a plausible claim of copyright infringement.

On the last point, the court observed that the privacy interest was outweighed especially given that the court could craft a limited protective order under Federal Rule of Civil Procedure 26(c) to protect an innocent ISP subscriber and to account for the sensitive and personal nature of the subject matter of the lawsuit.

Strike 3 Holdings, LLC v. Doe, 2018 WL 2278110 (D.Minn. May 18, 2018)

About the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

Court allows Microsoft to unmask unknown Comcast users accused of infringement

A federal court in Washington state has given the green light for Microsoft to subpoena records from Comcast to discover the identity of the person or persons associated with an IP address used to activate thousands of unauthorized copies of Microsoft software.

Statue_of_Anonymus_(Budapest,_2013)

Generally, in federal court litigation, a party cannot serve discovery requests or subpoenas until after the plaintiff and defendant have conferred (in a Rule 26(f) conference). But when the plaintiff does not know the identity of the defendant, there is a bootstrapping problem – discovery needs to be taken to find out the defendant with whom to conduct the conference. In situations like this, the plaintiff seeking to unmask an unknown defendant will file its complaint against one or more “John Does,” then ask the court for leave to serve discovery prior to the Rule 26(f) conference.

That is what happened in this case. It is a common tactic used by parties legitimately seeking to enforce intellectual property, as well as parties that may be considered copyright trolls. See, e.g., this early bittorrent case from 2011.

Microsoft filed its complaint and also filed a motion for leave to take discovery prior to the Rule 26(f) conference. Finding that good cause existed for the early discovery, the court granted the motion.

It held that

(1) Microsoft had associated the John Doe Defendants with specific acts of activating unauthorized software using product keys that were known to have been stolen from Microsoft, and had been used more times than were authorized for the particular software,

(2) Microsoft had adequately described the steps it took in an effort to locate and identify the John Doe defendants, specifically by utilizing its “cyberforensics” technology to analyze product key activation data, identifying patterns and characteristics which indicate software piracy,

(3) Microsoft had pleaded the essential elements to state a claim for copyright and trademark infringement, and

(4) the information proposed to be sought through a subpoena appeared likely to lead to identifying information that would allow Microsoft to serve the defendants with the lawsuit.

Microsoft Corp. v. John Does 1-10, 2017 WL 4958047 (W.D. Wash., November 1, 2017)

Image courtesy Dmitrij Rodionov under Creative Commons Attribution-Share Alike 3.0 Unported license. Licensed granted hereby under same terms.

Trial court erred in ordering defendant to turn over his iPhone in ediscovery dispute

AllianceBernstein L.P. v. Atha, — N.Y.S.2d —, 2012 WL 5519060 (N.Y.A.D. 1 Dept., November 15, 2012)

Plaintiff sued its former employee for breach of contract alleging he took client contact information on his iPhone when he left the job. The trial court ordered defendant to turn the iPhone over to plaintiff’s counsel so plaintiff could obtain the allegedly retained information.

Defendant sought review of the discovery order. On appeal, the court reversed and remanded.

The appellate court found that the lower court’s order that defendant turn over his iPhone was beyond the scope of plaintiff’s request and was too broad for the needs of the case. Ordering production of defendant’s iPhone (which, the court observed, has built-in applications and internet access) “was tantamount to ordering the production of his computer.” The iPhone would disclose irrelevant information that might include privileged communications or confidential information.

So the court ordered that the phone and a record of the device’s contents be delivered to the court for an in camera review to determine what, if any information contained on the phone was responsive to plaintiff’s discovery request.

Court orders in camera review of injured plaintiff’s Facebook content

Richards v. Hertz Corp., — N.Y.S.2d —, 2012 WL 5503841 (N.Y.A.D. 2 Dept. November 14, 2012)

Plaintiff sued defendant for personal injury. Defendant saw a photo plaintiff had publicly posted on Facebook of herself skiing. When defendant requested plaintiff to turn over the rest of her Facebook content (presumably to find other like-pictures which would undermine plaintiff’s case), plaintiff sought a protective order. The trial court granted the motion for protective order, but required plaintiff to turn over every photo she had posted to Facebook of herself engaged in a “sporting activity”.

woman skiing

Defendants appealed the entry of the protective order. On review, the appellate court reversed and remanded, finding that defendants had made a showing that at least some of the discovery sought would result in the disclosure of relevant or potentially relevant evidence.

But due to the “likely presence” of private and irrelevant information in plaintiff’s account, the court ordered the information be turned over to the judge for an in camera review prior to disclosure to defendants.

Whether the plaintiff effectively preserved her Facebook account information may be an issue here. The facts go back to 2009. One is left to wonder whether and to what extent plaintiff has not gone back and deleted information from her account which would bear on the nature and extent of her injuries. It goes to show that social media discovery disputes can take on a number of nuances.

Photo courtesy Flickr user decafinata under this Creative Commons license.

Court allows discovery of competitor’s keyword purchases

Scooter Store, Inc. v. Spinlife.com, 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 protects identity of anonymous email sender

Sandals Resorts Intern. Ltd. v. Google, Inc., — N.Y.S.2d —, 2011 WL 1885939, (N.Y.A.D. 1 Dept., May 19, 2011)

Some unknown person sent an email to a number of undisclosed recipients containing information that was critical of the hiring and other business practices of the Caribbean resort Sandals. Irritated by this communication, Sandals filed an action in New York state court seeking a subpoena to compel Google to identify the owner of the offending Gmail account.

The trial court denied the petition seeking discovery. Sandals sought review with the appellate court. On appeal, the court affirmed the denial of the petition for discovery.

Under New York law, a person or entity can learn the identity of an unknown possible defendant only when it demonstrates that it has “a meritorious cause of action and that the information sought is material and necessary to the actionable wrong.” In this case, the court held that the petition failed to demonstrate that Sandals had a meritorious cause of action.

The court found that nothing in the petition identified specific assertions of fact as false. It also found that the lower court did not err in reasoning that the failure to allege the nature of the injuries caused by the statements in the email were fatal to the petition.

It went on to find that even if the petition had sufficiently alleged the email injured Sandals’ business reputation or damaged its credit standing, it would still deny the application for disclosure of the account holder’s identification on the ground that the subject email was constitutionally protected opinion.

In discussing this portion of its decision, the court said some interesting things about the nature of internet communications, apparently allowing a certain characterization of online speech to affect its rationale:

The culture of Internet communications, as distinct from that of print media such a newspapers and magazines, has been characterized as encouraging a “freewheeling, anything-goes writing style.” […] [T]he e-mail at issue here . . . bears some similarity to the type of handbills and pamphlets whose anonymity is protected when their publication is prompted by the desire to question, challenge and criticize the practices of those in power without incurring adverse consequences such as economic or official retaliation. […] Indeed, the anonymity of the e-mail makes it more likely that a reasonable reader would view its assertions with some skepticism and tend to treat its contents as opinion rather than as fact.

The court made clear that these observations were “in no way intended to immunize e-mails the focus and purpose of which are to disseminate injurious falsehoods about their subjects.” The real cause for concern, and the thing to protect against, in the court’s view, was “the use of subpoenas by corporations and plaintiffs with business interests to enlist the help of ISPs via court orders to silence their online critics, which threatens to stifle the free exchange of ideas.”

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