F The end of John Doe copyright suits in the US?

Focus on music industry
The end of John Doe
copyright suits in the US?
Barnes & Thornburg’s Felicia Boyd reports on US ISPs refusing to comply with court
subpoenas demanding subscriber information in copyright cases
F
ile-sharing services continue to
facilitate the illegal exchange of
nearly every form of digital media,
despite
protracted
litigation
and numerous public relations
campaigns. BitTorrent, the world’s most used
file-sharing protocol, boasts over 150 million
users worldwide1.
After more than 30,000 lawsuits targeting
users of file-sharing networks, the Recording
Industry of America (RIAA) announced an
end to its litigation campaign in 2008. In
place of litigation, the RIAA began working
with Internet Service Providers (ISPs) to police
alleged law-breakers and stem the growth of
infringing activity.
But while the RIAA has stepped back
from this litigation strategy, other groups
have quickly filled the void. Entities such as
the US Copyright Group and Righthaven LLC,
along with numerous adult entertainment
companies, have embraced the strategy
of filing mass copyright infringement suits
against anonymous “Doe defendants”.
Adult entertainment companies have been
particularly litigious, filing over 100 lawsuits
against more than 15,000 defendants in the
last year and a half alone.
Mass “John Doe” suits are not a new
phenomena. The RIAA utilised the same
strategy throughout the 2000s with varying
results. As with the RIAA suits, plaintiffs enter
these cases without the necessary evidence to
identify the various “John Does”. Most often,
plaintiffs possess only a user’s IP address.
Thus, plaintiffs must subpoena subscriber
information from ISPs. Traditionally, ISPs,
particularly smaller ISPs, turn over subscriber
information. However, with the dramatic
expansion of mass “John Doe” suits in the last
few years, ISPs and courts have begun to resist
discovery efforts.
ISPs fight back
In response to the onslaught of “John
Doe” suits, judges across the country have
increasingly chided this litigation strategy. In
the Northern District of Illinois, chief judge
28 Intellectual Property magazine
James Holderman noted a “stiffening judicial
headwind” against this perceived “abuse of
the legal system2”. In the Northern District of
California, magistrate judge Howard Lloyd was
more condemning. In an order denying leave
to take expedited discovery, Lloyd suggested
that courts “will not assist a plaintiff who
seems to have no desire to actually litigate
but instead seems to be using the courts to
pursue an extrajudicial business plan against
possible infringers3”. These sentiments mirror
the concerns of several ISPs and consumer
advocacy groups across the country. Amid
this growing frustration, two of the country’s
largest ISPs recently refused to comply with
subpoenas seeking subscriber information.
Verizon, e-Books, and the
six-strikes solution
Last autumn, John Wiley & Sons, publishers
of the popular “For Dummies” book series,
became the first publisher to pursue BitTorrent
users in the United States. Until recently,
Wiley encountered little resistance in court.
In a federal action in the Southern District of
New York, Wiley sought and received court
permission to subpoena the identities of
certain Verizon subscribers.
For its part, Verizon objected to these
subpoenas and refused to answer. Among
other things, Verizon argued that the Doe
defendants were improperly joined and that
the subpoenas sought irrelevant information.
Moreover, while Wiley only requested
subscriber information for 10 users, Verizon
suggested that the subpoenas sought merely
“to harass, cause unnecessary delay, or
needlessly increase the cost of litigation4”.
Following a conference call with the judge
regarding these issues, Wiley withdrew all
subpoenas sent to Verizon.
In conjunction with its stand in the Wiley
& Sons litigation, Verizon’s participation in
the “six strikes” system suggests that it may
continue to resist efforts to obtain subscriber
information. In 2011, Verizon, along with
other major ISPs, reached a deal with the
RIAA and the Motion Picture Association
September 2012
of America (MPAA) to implement a system
through which copyright infringers receive
successive warnings regarding their conduct.
After six warnings (or strikes), ISPs may
implement a variety of repressive measures,
including slowing or temporarily disconnecting
offenders’ internet connections. In a recent
interview, Verizon representatives stated their
belief that this programme “offers the best
approach to the problem of illegal file sharing,
and importantly is one that respects the privacy
and rights of our subscribers5”.
Comcast and the ‘pornography
swarm’
Initially, like many other ISPs, Comcast complied
with subpoena requests in mass “John Doe”
suits. Like Verizon, however, Comcast recently
refused to comply with a subpoena request
in one of the so-called ‘pornography swarm’
cases filed in the Northern District of Illinois. AF
Holdings, a consortium of adult entertainment
producers, sought information on 88 of
Comcast’s subscribers. Instead of handing over
requested subscriber information, Comcast
moved to quash the subpoenas.
Comcast offered a scathing account of
AF Holdings’ joinder theory and its litigation
tactics. Comcast argued that AF Holdings had
no grounds to join the Doe defendants in one
lawsuit, as “the alleged illegal activity of the
different IP addresses occurred on different
days and times”, negating AF Holding’s “single
swarm” theory of joinder6. Furthermore, in a
noteworthy rebuke of AF Holdings’ litigation
strategy, Comcast accused the company
of “unfair litigation tactics” and using Doe
defendants’ “concern with being publicly
charged with downloading pornographic
films to wrest settlement from identified
subscribers7”. During a subsequent status
hearing on the issue, Judge Gary Feinerman
quashed the subpoenas.
Lessons learned: challenging
ISP subpoenas
As ISPs and courts increasingly resist mass
“John Doe” suits, certain patterns have
www.intellectualpropertymagazine.com
emerged. Underlying this resistance are wellworn concerns regarding forum shopping
and the avoidance of paying multiple court
filing fees. Certainly, recent cases reveal a
general aversion to the “Settlement-o-Matic”
litigation scheme plaintiffs are often accused
of employing. Still, the procedural challenges
to court-ordered discovery of ISP subscriber
information have met varying degrees of
success, largely stemming from divergent
judicial interpretation of BitTorrent technology
and how users interact to share files.
BitTorrent in a nutshell
The BitTorrent protocol allows users to share
files anonymously with other users. Instead
of relying on a central server to distribute
data directly to individual users, the BitTorrent
protocol allows individual users to distribute
data among themselves by exchanging pieces
of the file with each other to eventually obtain
a whole copy of the file. This process reduces
the load on the source computer and allows
devices to share larger computer files (such
as digital copies of movies). In BitTorrent
vernacular, individual downloaders of
particular files are called “peers”. The group
of peers involved in downloading a particular
file are called a “swarm.”
Personal jurisdiction challenges
Plaintiffs filing mass “John Doe” suits
assume that registered subscribers of a
given IP address are, in fact, the individuals
downloading infringing files. This is not always
the case. As Judge Gary Brown noted in an
order dismissing complaints against some 80
Doe defendants, “the assumption that the
person who pays for internet access at a given
location is the same individual who allegedly
downloaded a single sexually explicit film is
tenuous, and one that has grown more so
over time8”.Commentators have suggested
that the mere use of BitTorrent does not create
personal jurisdiction in every district where a
BitTorrent “peer” might be located, because
those locations are unpredictable and normally
invisible to the user9.
infringement is, without more, insufficient for
permissive joinder under Rule 20”11.
Plaintiffs in mass “John Doe” suits often
allege that each defendant who participated
in a BitTorrent “swarm” for a single file acted
in concert or conspired to commit copyright
infringement. Thus, as the argument goes, all
“swarm” participants may be properly joined
to a single lawsuit. Several courts have found
this reasoning unpersuasive. For instance,
courts have noted that the BitTorrent protocol
is fully automated and, therefore, various
defendants have no personal contact with
other members of a particular “swarm”12.
Furthermore, the alleged infringement often
occurs days apart, making it unlikely that
defendants’ computers communicated with
one another13.
Still, some courts have allowed mass “John
Doe” suits to proceed under the theory that
each Doe defendant who participated in a
BitTorrent “swarm” may be responsible for
distributing copyrighted materials to any other
Doe defendant14. Other courts have suggested
that joinder issues should not be considered
until individual defendants have been
identified and named, thus allowing plaintiffs
to proceed with discovery15.
To minimise joinder and jurisdictional
issues, some plaintiffs have opted to sue a
single defendant attached to an IP address
located in the district where the lawsuit is
filed. In these single defendant suits, plaintiffs
seek discovery of the IP addresses of nonparty computer users or “co-conspirators”
who downloaded the same file through the
BitTorrent system. Here too, however, courts
confronting the issue have pointed to the
nature of the BitTorrent protocol and suggested
that plaintiffs must sue each IP address in the
district where the address is located16. If these
trends continue, we may see the end of mass
John Doe suits against file-sharers.
Courts have consistently shown distaste for
the joinder of hundreds of “John Does”
in mass copyright infringement suits. For
instance, in the 2010 Axel Braun Productions v
Does 1-7098 case,10 the District Court for the
Northern District of West Virginia severed all
but one defendant (of 7,098) in a file-sharing
suit pertaining to the adult film “Batman
XXX: A Porn Parody”. Magistrate judge John
Preston Bailey, citing similar cases, explained
that the “alleged use of some of the same
ISPs and P2P networks to commit copyright
Footnotes
1. BitTorrent and µTorrent Software Surpass
150 Million User Milestone; Announce New
Consumer Electronics Partnerships, http://
w w w. re u t e r s . c o m / a r t i c l e / 2 0 1 2 / 0 1 / 0 9 /
idUS162488+09-Jan-2012+ BW20120109.
2. Memorandum Opinion and Order, Pacific
Century International, Ltd. v. Does 1-37, No.
1:12-cv-01057 (N.D. Ill. March 3, 2012), ECF No.
23 [Hereinafter Pacific Century Order].
3.Order Denying Application for Leave to Take
Expedited Discovery and Severing Does 2-90,
Hard Drive Productions, Inc., v. Does 1-90, No.
5:11-cv-03825 (N.D. Cal. March 30, 2012), ECF
No. 18.
4. See Endorsed Letter to Judge Katherine B.
Forrest, John Wiley & Sons, Inc. v. John Does
Nos. 1-37, No. 1:12-cv-01980 (S.D. N.Y. May 8,
www.intellectualpropertymagazine.com
September 2012
Improper joinder challenges
2012), ECF No. 7.
5. US ‘Six Strikes’ Anti-Piracy Scheme Delayed,
TorrentFreak (May 18, 2012), http://torrentfreak.
com/us-six-strikes-anti-piracy-schemedelayed-120518.
6.Memorandum in Opposition to Plaintiff’s Motion
for Order to Show Cause, AF Holding, LLC v.
Comcast Cable Communications, NO. 1:12cv-03516 (N.D. Ill. June 1, 2012), ECF No. 11
[hereinafter Comcast Memo]
7.Comcast Memo, supra note 9, at 12.
8.
Order & Report & Recommendation, In
re:BitTorrent Adult Film Copyright Infringement
Cases, No. 2:11-cv-03995 (E.D. N.Y. May 1,
2012), ECF No. 39 [hereinafter BitTorrent Order].
9.EFF Amici, supra note 6, at 10.
10. Order Severing Does 2-7098, Axel Braun
Productions v. Does 1-7098, No. 3:10-cv00112 (N.D. W.Va. Dec. 23, 2010), ECF No. 6
[hereinafter Axel Braun Order].
11. See Axel Braun Order, supra note 13, at 3.
12. BitTorrent Order, supra note 11.
13. BitTorrent Order, supra note 11.
14. See Memorandum Opinion and Order, First
Time Videos, LLC, v. Does 1-500, No. 1:10-cv06254, ECF No. 151.
15. See Call of the Wild Movie, LLC, v. Does 1-171,
770 F. Supp. 2d 332, 341(D. D.C. 2011).
16. Pacific Century Order, supra note 4 at 11.
Author
Felicia Boyd is a partner with Barnes
& Thornburg in the firm’s Minneapolis
office, where she is a member of the
Intellectual Property Department.
Boyd focuses her practice on complex
intellectual property litigation and
has led plaintiff and defence litigation
on a large variety of claims related to
patents, copyrights, trademarks and
trade dress.
With special thanks to Barnes &
Thornburg attorney William Manske
for his research and assistance drafting
the article.
Intellectual Property magazine 29