SBO Pictures, Inc. v. Does 1-3036, Case No. 11-4220 SC

• Decision Date: 30 November 2011
• Docket Number: Case No. 11-4220 SC
• Parties: SBO PICTURES, INC., d/b/a WICKED PICTURES, a California Corporation, Plaintiff, v. DOES 1-3036, Defendants.
• Court: U.S. District Court — Northern District of California

SBO PICTURES, INC., d/b/a WICKED PICTURES,

a California Corporation, Plaintiff,

v.DOES 1-3036, Defendants.

Case No. 11-4220 SC

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA

Dated: November 30, 2011

ORDER GRANTING IN PART

PLAINTIFF'S EX PARTE

APPLICATION FOR LEAVE TO

TAKE EXPEDITED DISCOVERY,

SEVERING DOE DEFENDANTS 2-

3036 FROM ACTION, AND

DISMISSING CLAIMS AGAINST

DOE DEFENDANTS 2-3036

I. INTRODUCTION

On August 26, 2011, Plaintiff SBO Pictures, Inc., d/b/a Wicked Pictures ("Plaintiff") filed a Complaint against 3036 unnamed defendants ("Doe Defendants"), alleging copyright infringement. ECF No. 1 ("Compl."). The same day, Plaintiff filed an Ex Parte Application for Leave to Take Limited Discovery, seeking leave to take third-party discovery in order to unearth the identities of Doe Defendants. ECF No. 4 ("Application"). For the reasons set forth below, the Court GRANTS IN PART Plaintiff's Application, SEVERS Doe Defendants 2-3036 from this action, and ORDERS that the claims against Doe Defendants 2-3036 be dismissed due to improper joinder.

II. BACKGROUND

Plaintiff is a motion picture production company. Compl. ¶ 7. Plaintiff alleges that it owns the copyright to the film "XXX Avengers" ("the Motion Picture"). Id. Plaintiff claims that the Motion Picture is the subject of the valid Certificate of Registration No. PA 1-745-351, issued June 10, 2011 by the United States Copyright Office, and that Plaintiff owns the registration. Id. ¶ 8.

Plaintiff alleges that Doe Defendants used "an online media distribution system, in this case a BitTorrent network, a 'peer to peer' network (or a 'P2P' network), to reproduce [and distribute] at least one copy of the Motion Picture." Id. ¶ 10. According to Plaintiff, "[e]ach Defendant has acted in cooperation with the other Defendants by agreeing to provide, and actually providing, on a P2P network an infringing reproduction of at least substantial portions of Plaintiff's copyrighted Motion Picture, in anticipation of the other Defendants doing likewise with respect to that work and/or other works." Id. ¶ 11. Plaintiff alleges that all Doe Defendants acted in concert by participating in the same BitTorrent "swarm,"¹ to achieve unlawful reproduction and distribution of theMotion Picture. Id. Plaintiff alleges that Doe Defendants' actions have violated Plaintiff's rights under the Copyright Act, 17 U.S.C. §§ 101, et seq.

Plaintiff attaches to the Complaint a list allegedly containing the Internet Protocol ("IP") addresses of each Doe Defendant, the date and time of each alleged infringement, and the Internet Service Provider ("ISP") associated with each IP address. Compl. Ex. A ("IP Log"). Plaintiff's contractor, Copyright Enforcement Group ("CEG"), declares that through monitoring Internet-based infringement of Plaintiff's copyrighted content, it confirmed that each Doe Defendant reproduced at least a substantial portion of the Motion Picture. Nicolini Decl. ¶¶ 17-19, 22.

Plaintiff argues that due to the anonymous nature of the peer-to-peer file distribution system used by Doe Defendants, it can only identify the names and addresses of individuals associated with these IP addresses by subpoenaing the ISPs. Application at 6, 9. Plaintiff seeks leave to serve third-party subpoenas on dozens of ISPs to compel them to provide the name, address, telephone number, and e-mail address of each Doe Defendant. See IP Log; Application Ex. 1 ("Sample Subpoena").

III. LEGAL STANDARD

Generally, a party may not initiate discovery before the parties have met and conferred pursuant to Federal Rule of Civil Procedure 26(f). However, a court may authorize earlier discovery "for the convenience of parties and witnesses and in the interestsof justice." Fed. R. Civ. P. 26(d). The requesting party must demonstrate good cause for earlier discovery. See Semitool, Inc. v. Tokyo Electron Am., Inc., 208 F.R.D. 273, 276 (N.D. Cal. 2002). "Good cause may be found where the need for expedited discovery, in consideration of the administration of justice, outweighs the prejudice to the responding party." Id.

According to the Ninth Circuit:

[W]here the identity of alleged defendants will not be known prior to the filing of a complaint[,] . . . the plaintiff should be given an opportunity through discovery to identify the unknown defendants, unless it is clear that discovery would not uncover the identities, or that the complaint would be dismissed on other grounds.

Gillespie v. Civiletti, 629 F.2d 637, 642 (9th Cir. 1980). For leave to conduct discovery to identify a Doe defendant, the moving party must: (1) identify the defendant with enough specificity to allow the Court to determine whether the defendant is a real person or entity who could be sued in federal court; (2) recount the steps taken to locate the defendant; (3) show that its action could survive a motion to dismiss; and (4) file a request for discovery with the Court identifying the persons or entities on whom discovery process might be served and for which there is a reasonable likelihood that the discovery process will lead to identifying information. Columbia Ins. Co. v. seescandy.com, 185 F.R.D. 573, 578-80 (N.D. Cal. 1999) ("Columbia Ins.").

In the context of parties seeking discovery in alleged online piracy, the court must balance "the need to provide injured parties with [a] forum in which they may seek redress for grievances" against "the legitimate and valuable right [of Internet users] toparticipate in online forums anonymously or pseudonymously . . . without fear that someone who wishes to harass or embarrass them can file a frivolous lawsuit and thereby gain the power of the court's order to discover their identity." Id. at 578.

IV. DISCUSSION

The Court is satisfied that Plaintiff has met the first, second, and fourth Columbia Insurance factors. However, the Court finds that Plaintiff has not established that it could satisfy the third Columbia Insurance factor because it has not shown that the Complaint could survive a motion to dismiss based on improper joinder.

A. Permissive Joinder Under Rule 20

Federal Rule of Civil Procedure 20(a) provides that parties may be joined in a single lawsuit where the claims against them arise from a single transaction or a series of closely related transactions. If defendants do not satisfy the test for permissive joinder, a court may sever the misjoined parties, "so long as no substantial right will be prejudiced by the severance." Coughlin v. Rogers, 130 F.3d 1348, 1350 (9th Cir. 1997) (citation omitted); see Fed. R. Civ. P. 21 ("Misjoinder of parties is not a ground for dismissing an action.").

In this case, the Court finds that Plaintiff has failed to satisfy the Rule 20 requirements for permissive joinder. Plaintiff argues that the Doe Defendants are properly joined because they infringed the same copyrighted work in cooperation with each other by exchanging portions of the work with one another (i.e., they were a part of the same "swarm"), and the nature of the BitTorrenttechnology requires concerted action with regard to each swarm. Application at 12-14.

Courts in this district are divided as to whether Rule 20 is satisfied by virtue of the fact that defendants were part of the same BitTorrent swarm. Compare Hard Drive Prods. v. Does 1-42, No. CV 11-01956 EDL, 2011 U.S. Dist. LEXIS 105229, at *2 (N.D. Cal. Aug. 3, 2011) (Rule 20 satisfied because defendants participated in a common BitTorrent swarm), with Third Degree Films v. Does 1-3577, No. C 11-02768 LB, 2011 U.S. Dist. LEXIS 128030, at *9 (N.D. Cal. Nov. 4, 2011) (Rule 20 not satisfied even though defendants were part of a common swarm) and Diabolic Video Prods., Inc. v. Does 1-2099, No. 10-CV-5865-PSG, 2011 U.S. Dist. LEXIS 58351, at *10-11 (N.D. Cal. May 31, 2011) (same).

Here, the Doe Defendants' alleged participation in the same swarm spanned approximately a four-month period from May 2011 through August 2011. See IP Log. The Court cannot conclude that a Doe Defendant who allegedly downloaded or uploaded a portion of the Motion Picture on May 11, 2011, a Doe Defendant who allegedly did the same on August 10, 2011, and over three thousand Doe Defendants who allegedly did the same in the interim, were engaged in the single transaction or series of closely-related transactions recognized under Rule 20. See Third Degree Films, 2011 U.S. Dist. LEXIS 128030, at *9 (Even though defendants were allegedly part of same swarm, "permissive joinder is inappropriate, particularly given that 3,577 Doe defendants downloaded the protected work at various dates and times ranging from November 11, 2010, to June 1, 2011.").

B. Other Factors Bearing on Whether Joinder is Proper

In addition to the Rule 20(a) criteria, a court must examine whether permissive joinder "would comport with the principles of fundamental fairness or would result in prejudice to either side." Coleman v. Quaker Oats Co., 232 F.3d 1271, 1296 (9th Cir. 2000)(internal quotation omitted). Courts may also consider factors such as the motives of the party seeking joinder and whether joinder would confuse and complicate the issues for the parties involved. IO Group, Inc. v. Does 1-435, No. C 10-4382 SI, 2011 U.S. Dist. LEXIS 14123, at *18 (N.D. Cal. Feb. 3, 2011); Hard Drive Prods., Inc. v. Does 1-188, No. C-11-01566 JCS, 2011 U.S. Dist. LEXIS 94319, at *17 (N.D. Cal. Aug. 23, 2011).

Here, the Court finds that even if Rule 20 were satisfied, other concerns weigh against joinder. First, joinder has the potential to produce an unfair result for some, if not many, Doe Defendants. Plaintiff defines Doe Defendants as the ISP subscribers whose internet connection was allegedly used to pirate the Motion Picture. Compl. ¶ 5. As many courts have noted, however, the ISP subscriber to whom a certain IP address was assigned may not be the same person who used the Internet connection for illicit purposes. For example, "[ISP] subscriber John Doe 1 could be an innocent parent whose...