Opinion
No. C 08-1193 SBA.
September 2, 2008
ORDER [Docket No. 4]
REQUEST BEFORE THE COURT
Before the Court is plaintiffs' Motion for Leave to Take Immediate Discovery (the "Motion") [Docket No. 4], Declaration of Carlos Linares ("Linares" Decl.") [Docket No. 6], Supplemental Declaration of Matthew Franklin Jaksa ("Jaksa Decl.") [Docket No. 10], Supplemental Declaration of Katheryn J. Coggon ("Coggon Decl.") [Docket No. 11], and Supplemental Declaration of Dawniell Alise Zavala ("Zavala Decl.") [Docket No. 15]. Plaintiffs are record companies and copyright holders that seek leave to issue a subpoena to the University of California, Berkeley (UCB), under Federal Rule of Civil Procedure 45, to identify defendant prior to a conference under Federal Rule of Civil Procedure 26(f). The Court finds this matter suitable for disposition without a hearing, and for the reasons discussed below, GRANTS the Motion with modifications.
BACKGROUND
The Internet and peer-to-peer (P2P) networks have spawned an illegal trade in copyrighted works. See MGM Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 923 (U.S. 2005). By downloading P2P software, and logging onto a P2P network, an individual may upload (distribute) or download (copy), without authorization, countless copyrighted music and video files to or from any other P2P network user worldwide. See id. at 920 (detailing how infringers download copyrighted works); A M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1014 (9th Cir. 2001) (stating infringers use P2P networks to copy and distribute copyrighted works); Universal City Studios, Inc. v. Reimerdes, 111 F.Supp.2d 294, 331 (S.D.N.Y.), aff'd sub nom., Universal City Studios, Inc. v. Corley, 273 F.3d 429 (2d Cir. 2001) (describing a viral system, in which the number of infringing copies made available multiplies rapidly as each user copying a file also becomes a distributor of that file). Until enjoined, Napster was a "notorious" online media distribution system. Grokster, 545 U.S. at 924. Notwithstanding the Napster decision, similar online media distribution systems emerged that have attempted to capitalize on the growing illegal market that Napster fostered. Linares Decl. ¶ 6. These include Ares, KaZaA, eDonkey, BitTorrent, DirectConnect, and Gnutella, among others. Id. Despite the continued availability of such systems, there is no dispute the uploading and downloading of copyrighted works without authorization is copyright infringement. Napster, 239 F.3d at 1014-15; In re Aimster Copyright Litig., 334 F.3d 643, 645 (7th Cir. 2003), cert. denied sub nom., Deep v. Recording Indus. Ass'n of Am., Inc., 540 U.S. 1107 (2004), leave to file for rehearing denied, 543 U.S. 1180 (2005). Nonetheless, at any given moment, millions of people illegally use online media distribution systems to upload or download copyrighted material. Linares Decl. ¶ 6. In fact, more than 2.6 billion infringing music files are downloaded monthly. L. Grossman, It's All Free!, Time, May 5, 2003, at 60, 60.
P2P networks allow Internet computer users to share exact copies of computer files. Linares Decl. ¶ 7; Coggins Decl. In the more popular types of networks, a "uploader" logs onto a P2P network, and makes certain files on their computer available for copying to a "downloader." Id. In turn, a "downloader" logs onto a P2P network and enters search commands, generally looking for a certain file or type of file. Id. For music file searches, a downloader might search by a musical group's name or a musical piece's title. Id. If the specific file sought has been made available for copying by uploaders on the P2P network, the downloader will obtain a search result identifying by code name which uploaders have that file. Linares Decl. ¶¶ 7, 10; Coggins Decl. The downloader then selects one of the uploaders from the search results, and downloads a copy of that file to their computer. Id.
The propagation of illegal digital copies over the Internet significantly harms copyright owners, and has had a particularly devastating impact on the music industry. Linares Decl. ¶ 9. The member companies of the Recording Industry Association of America., Inc. (RIAA) lose significant revenues on an annual basis due to the millions of unauthorized downloads and uploads of well-known recordings distributed on P2P networks. Id.
In this case, plaintiffs are record companies who own the copyrights in the most popular sound recordings in the United States. Docket No. 5 at 1:2-3 (Mem. in Supp. of the Mot. ("Mem.")). In their Motion, they seek leave of the Court to serve limited, immediate discovery on a third party Internet Service Provider ("ISP") to determine the true identity of defendant John Doe, whom they are suing for direct copyright infringement. Without such discovery, they cannot identify defendant, and thus cannot pursue their lawsuit to protect their copyrighted works from repetitive, rampant infringement.
Plaintiffs allege defendant, without authorization, used a P2P system to download plaintiffs' copyrighted works and/or to distribute them to the public. Linares Decl. ¶ 18. Although plaintiffs do not know defendant's identity, they have identified defendant by a unique Internet Protocol ("IP") address assigned to defendant on the date and at the time of the infringing activity. Id. Additionally, plaintiffs have gathered evidence of the infringing activities. Id. ¶¶ 14-15, 19. Plaintiffs have downloaded a sample of several of the sound recordings defendant illegally distributed and have evidence of every file, numbering in the hundreds, that defendant illegally distributed to the public. Id.
Plaintiffs have identified the ISP that provided Internet access to defendant by using a publicly available database to trace the IP address for Defendant. Id. ¶¶ 12, 18. Here, the ISP is UCB. Id. ISPs own or are assigned certain blocks or ranges of IP addresses. Id. ¶ 16. A subscriber gains access to the Internet through an ISP after setting up an account with the ISP. Id. An ISP then assigns a particular IP address in its block or range to the subscriber when that subscriber goes "online." Id. After reviewing the subscriber activity logs, which contain the assigned IP addresses, an ISP can identify its subscribers by name. Id. Thus, when an ISP is given a defendant's IP address and the date and time of infringement, it quickly and easily can identify the name and address of a Doe defendant, i.e., the ISP's subscriber, because that information is contained in the ISP's subscriber activity log files. Id.
Plaintiffs have no ability to determine a defendant's true name other than by seeking the information from the ISP. Id. ¶¶ 10, 16. Plaintiffs' experience, however, is ISPs typically keep log files of subscriber activities for only limited periods of time — which can range from as short as a few days, to a few months — before erasing the data. Id. ¶ 24. Nonetheless, plaintiffs alert the ISP to the existence of the copyright claims shortly after identifying the infringing activity and ask the ISP to maintain the log files.
Plaintiffs now seek leave of the Court to serve limited, immediate discovery on UCB to identify defendant. Plaintiffs intend to serve a Rule 45 subpoena on UCB seeking documents, including electronically-stored information, sufficient to identify defendant's true name, current and permanent addresses and telephone numbers, e-mail addresses, and Media Access Control ("MAC") addresses. If UCB cannot link the IP address listed in the subpoena to a specific individual, plaintiffs seek all documents and electronically-stored information relating to the assignment of that IP address at the date and time the IP address was used to infringe plaintiffs' copyrighted sound recordings. Without the ability to obtain defendant's identifying information, plaintiffs are unable to pursue their lawsuit to protect their copyrighted works from repeated infringement. Lenares Decl. ¶ 24. Moreover, the infringement may be ongoing such that immediate relief is necessary. Thus, plaintiffs assert the need for the immediate, limited discovery is critical.
Upon receiving plaintiffs' Motion, the Court was concerned for two independent reasons that plaintiffs were attempting to invoke its authority unnecessarily. First, the Court was uncertain UCB would even require a subpoena for the sought-after information, where plaintiffs had never simply asked UCB to produce it without one. Second, the Court was uncertain UCB still had the sought-after information preserved or intact, given more than a year has passed between the events giving rise to the Motion and the Court's analysis of the Motion. Thus, on July 3, 2008, the Court held the Motion in abeyance for 21 days so plaintiffs could meet and confer with UCB on these two issues. See Docket No. 14. On July 21, 2008, plaintiffs declared they had met and conferred with UCB, and its counsel had stated UCB still had the sought-after information but would not produce it without a subpoena. Zavala Decl. ¶ 7.
LEGAL STANDARD
Federal Rule of Civil Procedure 26(d) states, "A party may not seek discovery from any source before the parties have conferred as required by Rule 26(f), except in a proceeding exempted from initial disclosure under Rule 26(a)(1)(B), or when authorized by these rules, by stipulation, or by court order." Here, no Rule 26(a)(1)(B) exception or rule applies, nor can plaintiffs obtain a stipulation from an unknown Doe defendant. Thus, they may only use expedited discovery by court order.
In fashioning discovery orders under Rule 26(d), the district courts wield broad discretion, as they do when managing any aspect of discovery. See Crawford-El v. Britton, 523 U.S. 574, 598 (1998); Laub v. U.S. Dep't. of Interior, 342 F.3d 1080, 1093 (9th Cir. 2003); Blackburn v. U.S., 100 F.3d 1426, 1436 (9th Cir. 1996); Watts v. S.E.C., 482 F.3d 501, 507 (D.C. Cir. 2007); Hussain v. Nicholson, 435 F.3d 359, 363 (D.C. Cir. 2006); Carefirst of Md., Inc. v. Carefirst Pregnancy Centers, Inc., 334 F.3d 390, 402 (4th Cir. 2003); Rhodes v. McDannel, 945 F.2d 117, 119 (6th Cir. 1991).
In the Ninth Circuit, courts use the "good cause" standard to determine whether discovery should be allowed to proceed prior to a Rule 26(f) conference. 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. In re Countrywide Fin. Corp. Derivative Litig., 542 F.Supp.2d 1160, 1179 (C.D. Cal. Mar. 28, 2008); Noble v. Kiewit Pac. Co., No. C 08-00666 SI, slip copy, 2008 WL 413754, *1 (N.D. Cal. Feb. 13, 2008); Cartwright v. Viking Industries, Inc., No. 207-CV-02159 FCD EFB, ___ F.R.D. ____, 2008 WL 413271, *3 (E.D. Cal. Feb. 12, 2008); Arista Records LLC v. Does 1-43, No. 07 CV 2357 LAB POR, slip op., 2007 WL 4538697, *1 (S.D. Cal. Dec. 20, 2007); Invitrogen Corp. v. President and Fellows of Harvard Coll., No. CIV07CV0878JLSPOR, 2007 WL 2915058, *2 (S.D. Cal. Oct. 4, 2007) (unreported); Capitol Records, Inc. v. Doe, No. CIV. 07CV1570JMPOR, 2007 WL 2429830, *1 (S.D. Cal. Aug. 24, 2007) (unreported); Evans v. Unknown Names of Dep't of Corr. Officers, No. C03-05420 RMW H.L., 2007 WL 30597, *2 (N.D. Cal. Jan. 3, 2007) (unreported); UMG Recordings, Inc. v. Does 1-4, No. 06-0652 SBA EMC, 2006 WL 1343597, *1 (N.D. Cal. Mar. 6, 2006) (unreported); Magellan Group Inv., LLC v. First Indigenous Depository Co., LLC, No. C 05-01994 JSW, 2005 WL 1629940, *2 (N.D. Cal. Jul 8, 2005) (unreported); Semitool, Inc. v. Tokyo Electron Am, Inc., 208 F.R.D. 273, 276 (N.D. Cal. 2002); Yokohama Tire Corp. v. Dealers Tire Supply, Inc., 202 F.R.D. 612, 614 (D. Ariz. 2001); UMG Recordings, Inc. v. Doe, 2008 WL 2949427 (N.D.Cal. 2008) (unreported).
In Internet infringement cases, courts routinely find good cause exists to issue a Rule 45 subpoena to discover a Doe defendant's identity, prior to a Rule 26(f) conference, where a plaintiff makes a prima facie showing of infringement, there is no other way to identify the Doe defendant, and there is a risk an ISP will destroy its logs prior to the conference. Arista, 2007 WL 4538697 at *1; Capitol, 2007 WL 2429830 at *1; UMG, 2006 WL 1343597 at *1. This is because, in considering "the administration of justice," early discovery avoids ongoing, continuous harm to the infringed party and there is no other way to advance the litigation. See id. As for the defendant, there is no prejudice where the discovery request is narrowly tailored to only seek their identity. Arista, 2007 WL 4538697 at *1; Capitol, 2007 WL 2429830 at *1; UMG, 2006 WL 1343597 at *3. Thus, Courts routinely find the balance favors granting a plaintiff leave to take early discovery. Arista, 2007 WL 4538697 at *1; Capitol, 2007 WL 2429830 at *1; UMG, 2006 WL 1343597 at *1; see also Arista Records LLC v. Does 1-16, No. 07-1641 LKK EFB (E.D. Cal. Aug. 23, 2007); Sony BMG Music Entm't v. Does 1-16, No. 07-cv-00581 BTM AJB (S.D. Cal. Apr. 19, 2007); UMG Recordings, Inc. v. Does 1-2, No. CV04-0960 RSL (W.D. Wash. May 14, 2004); Loud Records, LLC v. Does 1-5, No. CV 04 0134 RHW (E.D. Wash. May 10, 2004); London-Sire Records, Inc. v. Does 1-4, No. CV 04-1962 ABC AJWx (C.D. Cal. Apr. 2, 2004); Interscope Records. v. Does 1-4, No. CV-04-131 TUC-JM (D. Ariz. Mar. 25, 2004); UMG, 2008 WL 2949427.
As there is no Westlaw or LEXIS citation available for these orders, plaintiffs attached them as Exhibits to their Memorandum in Support of the Mot. See Mem.
In addition to these Ninth Circuit cases, see also Arista Records LLC v. Does 1-19, No. CIV.A. 07-1649 CKK, slip op., 2008 WL 1883439 (D. D.C. Apr. 28, 2008); Fonovisa, Inc. v. Does 1-9, No. CIV. A. 07-1515, slip op., 2008 WL 919701, *1 (W.D. Pa. Apr. 3, 2008); Arista Records LLC v. Does 1-7, No. 3:08CV18 CDL, slip op., 2008 WL 542709, *1 (M.D. Ga. Feb. 25, 2008); Arista Records LLC v. Does 1-18, No. 3:07-CV-481, slip op., 2008 WL 160777, *1 (E.D. Tenn. Jan. 15, 2008); Zomba Recording LLC v. Does 1-24, No. 3:07 CV 448, slip op., 2008 WL 123839, *1 (E.D. Tenn. Jan. 10, 2008); Warner Bros. Records, Inc. v. Does 1-6, 527 F.Supp.2d 1, 1 (D. D.C. 2007); UMG Recordings, Inc. v. Does 1-24, No. 4:07-CV-01889 CEJ, 2007 WL 4205768, *1 (E.D. Mo. Nov. 26, 2007) (unreported); Arista Records, LLC v. Does 1-4, No. 1:07-CV-1115, 2007 WL 4178641, *1, *3 (W.D. Mich. Nov. 20, 2007) (unreported); Arista Records LLC, No. CIV 07 568 R, slip op., 2007 WL 5030732, *1 (W.D. Okla. Nov. 14, 2007); Interscope Records v. Does 1-14, Civ. A. No. 07-4107, slip op., 2007 WL 2900210, *1 (D. Kan. Oct. 1, 2007); LaFace Records, LLC v. Does 1-5, No. 2:07-CV-187, slip op., 2007 WL 2867351, *1 (W.D. Mich. Sep. 27, 2007), motion to vacate denied by No. 2:07-CV-187, 2008 WL 513508 (W.D. Mich. Feb. 22, 2008); Virgin Records Am., Inc. v. Does 1-33, No. 3:07-CV-235, slip op., 2007 WL 3145838, *1 (E.D. Tenn., Oct. 24, 2007); Warner Bros. Records Inc. v. Does 1-4, No. 2:07-cv-424, slip op., 2007 WL 1960602, *1 (D. Utah July 5, 2007); Warner Bros. Records, Inc. v. Does 1-20, No. 07-cv-1131, slip op., 2007 WL 1655365, *1 (D. Colo. June 5, 2007); Arista Records LLC v. Does 1-9, No. CIVA 07 CV 00628 EWN MEH, 2007 WL 1059049, *1, (D. Colo. Apr. 4, 2007) (unreported); Interscope Records v. Does, No. CIVA06CV00352WDMPAC, slip op., 2006 WL 1351876, *1 (D. Colo. Mar. 13, 2006); New Line Prod., Inc. v. Does 1-9, No. CIV A05CV1876 WDM PAC, 2005 WL 4163625, *1 (D. Colo. Dec. 6, 2005) (unreported); Arista Records LLC v. Does 1-20, No. 05 CV 2144 WDM PAC, 2005 WL 3776346, *1 (D. Colo. Nov. 7, 2005) (unreported); Qwest Commc'n Int'l, Inc. v. Worldquest Networks, Inc., 213 F.R.D. 418, 419 (D. Colo. 2003).
ANALYSIS
I. Good cause exists for leave to conduct expedited discovery.
Good cause exists where the need for expedited discovery, in consideration of the administration of justice, outweighs the prejudice to the responding party. Semitool, Inc., 208 F.R.D. at 276. In this Internet infringement case, plaintiffs plead the three elements required to show good cause for expedited discovery. First, they make a prima facie showing of infringement. To establish copyright infringement, under 17 U.S.C. § 101 et seq., two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. Feist Publ'n, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). Here, plaintiffs allege they own valid copyrights in original musical works, and provide lists showing defendant has distributed them as data files over the Internet, without their permission, some of which they copied off defendant's computer. See 17 U.S.C. 106(3) (a copyright owner has the exclusive right to distribute copies of a copyrighted work to the public). Thus, plaintiffs have shown the first element of good cause for expedited discovery in an Internet infringement action.Second, plaintiffs cannot identify defendant, known only by its IP address, other than by a Rule 45 subpoena issued to UCB, to examine its ISP logs. Although plaintiffs were able to access defendant's computer to download files, via a P2P system, this system does not allow plaintiffs to access defendant's computer to obtain identifying information other than an IP address, unless defendant has set it up to do so, which is not the case here. See Coggins Decl. Nor does a P2P system allow plaintiffs to upload a file onto defendant's computer, to communicate with it, or provide notice of infringement or suit. See id. Thus, plaintiffs have shown the second element of good cause for expedited discovery in an Internet infringement action.
As discussed above, a P2P network allows a person to search for a file on computers on a P2P network, and download those files. See supra note 1. It does not, however, allow a person to upload a file to another specific computer. Coggins Decl. ¶ 4.
Third and last, plaintiffs have alleged there is a risk UCB could destroy these logs, absent expedited discovery. Thus, plaintiffs have shown the third element of good cause for expedited discovery in an Internet infringement action.
As such, the Court finds the need for expedited discovery, in consideration of the administration of justice, outweighs the prejudice to defendant. Looking first at "the administration of justice," without expedited discovery, plaintiffs absolutely cannot identify defendant, which means this matter cannot proceed forward, and plaintiffs will continue to suffer ongoing, continuous injury due to defendant's illegal activities. Looking at the prejudice to defendant, there is none, as plaintiffs' request is extremely narrow, seeking only to identify defendant's contact information in order to advise it of suit, and possibly resolve this matter without additional litigation. Further, plaintiffs and the Court have provided protective measures, as discussed below in the Conclusion section, to avoid undue prejudice to defendant and protect its privacy. Thus, because the need for expedited discovery, in consideration of the administration of justice, outweighs the prejudice to defendant, the Court GRANTS plaintiffs' Motion.
CONCLUSION
ACCORDINGLY, the Court GRANTS with modifications, plaintiffs' Motion for Leave to Take Immediate Discovery [Docket No. 4]. Specifically:
(1) The Subpoena
(a) Plaintiffs may immediately serve a subpoena pursuant to Federal Rule of Civil Procedure 45 on UCB to obtain the name, current and permanent addresses, telephone numbers, e-mail addresses, and MAC addresses for defendant or similar information suitable to identify defendant (the "Identifying Information");
(b) Plaintiffs must serve on UCB a copy of this Order attached to the subpoena;
(c) The subpoena may only request information identifying the user of IP address 169.229.97.232, on November 9, 2007, at 02:14:09 EST, Compl., Ex. "A."
(2) Identification and Service on Student
UCB shall reasonably attempt to identify defendant within five days of service of the subpoena, and in that five-day period serve defendant with a copy of the subpoena and this Order.
(3) Majority Verification
As a threshold matter, UCB shall determine, within five days of service of the subpoena, whether defendant was 18 years of age or older on November 9, 2007 at 02:14:09 EST. If defendant was under 18 years of age at this time, UCB shall immediately notify the student and plaintiffs of its determination. Plaintiffs shall then immediately withdraw their subpoena, and notify the Court of this fact. Plaintiffs, if they wish, may then file an ex parte motion addressing California's privacy laws governing the records of minors held by public entities. UCB shall not comply with the withdrawn subpoena.
(4) Motions to Quash or Other Objections
UCB shall have 20 days from service of the subpoena, to move to quash or otherwise object to the subpoena. Defendant shall have 15 days from service of the subpoena on him or her, to move to quash or otherwise object to the subpoena. If neither UCB nor defendant so moves or objects within these time periods, UCB shall serve the Identifying Information on plaintiffs within 25 days after UCB served the subpoena on defendant.
Notwithstanding the preceding paragraph, after 20 days from service on the subpoena on it, UCB may move to quash or otherwise object to the subpoena to the extent provided by the Federal Rules of Civil Procedure. Likewise, after 15 days from service of the subpoena on him or her, defendant may move to quash or otherwise object to the subpoena to the extent provided by the Federal Rules of Civil Procedure.
If any motions are brought to quash or otherwise objecting to the subpoena, UCB shall preserve the Identifying Information pending resolution of such motions.
(5) Scope of Use of the Identifying Information
Any information disclosed to plaintiffs in response to the subpoena may be used by them solely for the purpose of protecting their rights under the Copyright Act, 17 U.S.C. § 101 et seq.
Any such information filed with this Court shall conform to Federal Rule of Civil Procedure 5.2 and Civil Local Rule 3-17.
IT IS SO ORDERED.