IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF CALIFORNIA
January 20, 2012
MILLENNIUM TGA, INC., PLAINTIFF,
JOHN DOE, DEFENDANT.
The opinion of the court was delivered by: Kendall J. Newman United States Magistrate Judge
Presently before the court is plaintiff's ex parte application for leave to take expedited discovery, which plaintiff filed on January 6, 2012. (App. for Expedited Discovery, Dkt. No. 7.) Plaintiff, Millennium TGA, Inc. ("plaintiff"), did not notice the ex parte application for hearing. The undersigned concludes that oral argument would not be of material assistance in resolving the application. Accordingly, the application will be decided on the papers submitted.*fn1
Through plaintiff's application for expedited discovery, plaintiff seeks permission to serve a discovery subpoena upon a third party named Joe Vasquez, the "account holder associated with" the Internet Protocol ("IP") address "126.96.36.199," which was allegedly used in connection with infringement upon plaintiff's copyrighted adult video entitled Ladyboy - Ladyboy - Kae ("Video"). Although plaintiff alleges that Mr. Vasquez is the "holder" of the account allegedly used to infringe upon plaintiff's copywritten Video, plaintiff has not formally named Mr. Vasquez as a defendant in this action because "the relationship between an account holder and infringer can be imperfect." (Complaint, ("Compl."), Dkt. No. 2 ¶ 1; App. for Expedited Discovery at 9.) Instead, plaintiff requests expedited discovery (in the form of deposing Mr. Vasquez as a third party), purportedly to obtain the identities of the defendant(s) alleged to have used Mr. Vasquez's account associated with IP address "188.8.131.52" to infringe on plaintiff's rights in regards to the Video. (App. for Expedited Discovery at 5; see also Compl. ¶¶ 1-4, 19-37.)
The undersigned has considered plaintiff's application and, for the reasons stated below, denies plaintiff's application to conduct limited early discovery pursuant to Federal Rule of Civil Procedure 26(d)(1).
On November 21, 2011, plaintiff filed a complaint for copyright
civil conspiracy against John Doe, an unnamed defendant.*fn2
(Compl. ¶ 1.) Plaintiff is a producer of adult entertainment
content, and is alleged to be the exclusive holder of the relevant
rights with respect to the Video. (Compl. ¶¶ 3-4.) In the course of
monitoring Internet-based infringement of its copyrighted content,
plaintiff's agents allegedly observed unlawful reproduction and
distribution of the Video occurring over a particular IP address via
the Bit Torrent file transfer protocol, the mechanics of which are
further described in the Complaint.*fn3
(Compl. ¶¶ 5, 14-18, 22-24.) According to plaintiff, it has already determined that a person named Joe Vasquez ("Mr. Vasquez") is the account holder of the IP address involved. (App. for Expedited Discovery at 5.) According to plaintiff, "[e]ven if Mr. Vasquez did not download and distribute Plaintiff's copyrighted video himself, the infringing activity occurred over his network and the equipment he controls," such that Mr. Vasquez is the only person "with information that can allow Plaintiff to identify the actual infringer." (Id. at 5 n.1; 9.) According to plaintiff, when plaintiff's counsel contacted Mr. Vasquez, "Mr. Vasquez was entirely non-responsive," and ignored all of plaintiff's counsel's attempts to meet and confer informally regarding the identity of the alleged infringer. (Id. at 9.) Also according to plaintiff, "[a]ll attempts at contacting Mr. Vasquez have failed. While it appears clear that Mr. Vasquez still resides at his home address, he has clearly chosen to ignore all telephone, email, and letter correspondence by Plaintiff." (Id. at 5 n.1.) Finally, plaintiff believes that "Mr. Vasquez's evasive behavior thus far does not reflect the actions of an entirely innocent third party." (Id.)
Plaintiff now requests the court to authorize service of a third party deposition subpoena upon Mr. Vasquez. Plaintiff states that, in some cases, an account holder may be able to offer a credible explanation for why he or she is not the infringer and may be able to identify the actual infringer, such as another household member or tenant. (App. for Expedited Discovery at 5.) As such, plaintiff contends that it cannot proceed in the action without ascertaining the likely infringer's identity, and that Mr. Vasquez is the only person with information that can allow plaintiff to identify the actual infringer and permit service of process on that individual. (Id.)
Federal Rule of Civil Procedure 26(d)(1) provides: "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" (emphasis added). District courts within the Ninth Circuit have permitted expedited discovery prior to the Rule 26(f) conference upon a showing of "good cause." E.g., In re Countrywide Fin. Corp. Derivative Litig., 542 F. Supp. 2d 1160, 1179 (C.D. Cal. 2008) (citing Semitool, Inc. v. Tokyo Electron Am., Inc., 208 F.R.D. 273 (N.D. Cal. 2002)); accord Am. LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1066 (C.D. Cal. 2009). "Good cause exists where the need for expedited discovery, in consideration of the administration of justice, outweighs the prejudice to the responding party." In re Countrywide, 542 F. Supp. 2d at 1179 (citation and internal quotation marks omitted); Semitool, Inc., 208 F.R.D. at 276.
The court must perform the evaluation of the existence of "good cause" in light of "the entirety of the record . . . and the reasonableness of the request in light of all the surrounding circumstances." Semitool, Inc., 208 F.R.D. at 275 (citation & quotation marks omitted) (emphasis removed); Am. Legalnet, 673 F. Supp. 2d at 1067. Judges in the Northern District of California have considered four factors derived from Columbia Ins. Co. v. Seescandy.com, 185 F.R.D. 573, 578-80 (N.D. Cal. 1999), in evaluating motions for permission to conduct early discovery to ascertain the identities of Doe defendants. These judges have considered "whether the plaintiff (1) identifies the Doe defendant with sufficient specificity that the court can determine that the defendant is a real person who can be sued in federal court, (2) recounts the steps taken to locate and identify the defendant, (3) demonstrates that the action can withstand a motion to dismiss, and (4) proves that the discovery is likely to lead to identifying information that will permit service of process." See MCGIP, LLC v. Does 1-149, 2011 WL 3607666, at *2 (citing Columbia Ins., 185 F.R.D. at 578-80).
Good cause for expedited discovery is frequently found in cases
involving claims of infringement and unfair competition or in cases
where the plaintiff seeks a preliminary injunction. Semitool, Inc.,
208 F.R.D. at 276; Pod-Ners, LLC v. N. Feed & Bean of Lucerne Ltd.
Liability Co., 204 F.R.D. 675, 676 (D. Colo. 2002).*fn4
Federal district courts in California have applied the test
in Semitool and found good cause to allow limited expedited discovery
to ascertain the identities of Doe defendants in copyright
infringement actions. See e.g. UMG Recordings, Inc. v. Doe, No.
C-08-03999 RMW, 2008 WL 4104207, at *1-3 (N.D. Cal. Sept. 4, 2008)
(unpublished) (granting leave to take expedited discovery in the form
of a Rule 45 subpoenas to obtain "documents that identify Defendant,
including the name, current (and permanent) address and telephone
number, e-mail address, and Media Access Control addresses for
Defendant" John Doe); Arista Records LLC v. Does 1-43, No.
07cv2357-LAB (POR), 2007 WL 4538697, at *1-2 (S.D. Cal. Dec. 20, 2007)
(unpublished) (granting leave to take expedited discovery in the form
of a Rule 45 subpoena for documents that would reveal each
defendant's "true name, current and permanent addresses and telephone
numbers, e-mail addresses, and Media Access Control
In Arista Records LLC, the plaintiffs alleged that unidentified defendants had used an online media distribution system to download and distribute plaintiffs' copyrighted works to the public without permission. Arista Records LLC, 2007 WL 4538697, at *1. Because the plaintiffs were only able to identify each defendant by a unique internet protocol address assigned to that defendant, plaintiffs filed an ex parte application seeking leave to serve immediate discovery on a third-party internet service provider ("ISP") to identify the Doe defendants' true identities. Id. The court found good cause to allow expedited discovery based on the plaintiffs' prima facie showing of infringement, the risk that the ISP would not long preserve the information sought, the narrow tailoring of the requests to the minimum amount of information needed to identify the defendants without prejudicing their rights, and the fact that the expedited discovery would substantially contribute to moving the case forward. Id. The court further noted that, without such discovery, plaintiffs could not identify the Doe defendants and would not be able to pursue their lawsuit to protect their copyrighted works from infringement. Id.
Here, plaintiff has not demonstrated good cause for the expedited discovery requested. Unlike the plaintiffs in UMG Recordings, Inc. and Arista Records LLC, plaintiff has already discovered the name and contact information of the account holder of the IP address involved. Therefore, assuming plaintiff has a good faith basis for its claims, plaintiff can name Mr. Vasquez as a defendant and serve him with process. Simply put, plaintiff has not shown that it is unable to pursue its lawsuit to protect its copyrights absent expedited discovery.
Moreover, even if plaintiff were to establish good cause for the expedited discovery requested, it is outweighed by the significant potential prejudice to the responding party, Mr. Vasquez. "Expedited discovery may be inappropriate where defendants are required to unwarily incriminate themselves before they have a chance to review the facts of the case and to retain counsel." Pod-Ners, LLC, 204 F.R.D. at 676 (citations omitted). To be sure, courts frequently allow expedited discovery in copyright infringement cases involving peer-to-peer ("P2P") networks to allow identification of Doe defendants. But, the expedited discovery requested is usually a narrowly tailored document subpoena upon a third party internet service provider, which seeks the minimum amount of information needed to identify defendants, such as names, addresses, phone numbers, and e-mail addresses of account holders associated with the IP addresses. See e.g. Diabolic Video, 2011 WL 3100404, at *4 (where complaint named 2,099 Doe defendants, court severed Does 2 through 2,099 and granted expedited discovery in the form of "a Rule 45 subpoena" on a third party internet service provider, which would seek "information sufficient to identify Doe 1, including the name, addresses, telephone numbers, and email addresses of Doe 1"); IO Group, Inc. v. Does 1-65, No. 10-4377 SC, 2010 WL 4055667, at *3 (N.D. Cal. Oct. 15, 2010) (unpublished) (granting expedited discovery in the form of "a Rule 45 subpoena on [third party internet service provider] seeking documents sufficient to identify the names, addresses, telephone numbers, and e-mail addresses associated with the sixty-five IP addresses identified in the Complaint"); UMG Recordings, Inc., 2008 WL 4104207, at *3 (granting expedited discovery in the form of a "Rule 45 subpoena on [third party internet service provider] to seek documents revealing the name, current and permanent address, e-mail address, and Media Access Control address of John Doe"); Arista Records LLC, 2007 WL 4538697, at *1-2 (granting expedited discovery in the form of a Rule 45 subpoena upon third party internet service provider "seeking documents that identify Defendant's true name, current and permanent addresses and telephone numbers, e-mail addresses, and Media Access Control addresses").
In this case, plaintiff already has the name and contact information of the account holder, needs nothing further from a third party internet service provider, and instead seeks to orally depose the identified account holder. During the deposition, plaintiff "intends to elicit facts about Mr. Vasquez's involvement, if any, with the unauthorized distribution of Plaintiff's video(s) via Mr. Vasquez's IP address; to learn about Mr. Vasquez's computers and network setup; to assess Mr. Vasquez's technical savvy; and to identify any other persons who had access to Mr. Vasquez's computer and network." (App. for Expedited Discovery at 11.) This goes far beyond seeking to identify a Doe defendant. Instead, it amounts to a full-on deposition during which Mr. Vasquez, who may or may not be represented by counsel, may unwarily incriminate himself on the record before he has even been named as a defendant and served with process.*fn5
Accordingly, plaintiff has failed to show "good cause" warranting the requested expedited discovery, and plaintiff has not shown that "good cause" outweighs the likely prejudice that would result from the deposition of Mr. Vasquez.
The undersigned is also troubled by plaintiff's failure to substantiate certain claims made in its moving papers. For instance, in arguing that plaintiff has "exhausted all other means of discovery to identify John Doe" (App. for Expedited Discovery at 9) plaintiff represents that its counsel "attempted to contact Mr. Vasquez . . . to further determine the identity of the infringer . . . [but] Mr. Vasquez was entirely non-responsive, and, in fact, merely ignored all of Plaintiff's counsel's attempts to meet and confer." (Id. at 5 n.1; 9.) However, plaintiff's counsel did not file an accompanying declaration in support of these representations, leaving the court to accept them on faith alone.*fn6 Similarly, plaintiff repeatedly argues that the requested third party deposition subpoena will be "narrowly tailored to be the least intrusive" to Mr. Vasquez and "reasonably calculated" to lead to discovery of the infringer's true identity. (Id. at 7.) However, plaintiff did not file a copy of any draft proposed deposition subpoena to Mr. Vasquez, so the court is left to guess at the precise verbiage and scope that plaintiff would ultimately employ in the actual subpoena.
In sum, plaintiff has not shown that good cause exists for the early discovery requested. Assuming plaintiff has a good faith basis for its claims, plaintiff can name Mr. Vasquez as a defendant, serve him with process, hold the Rule 26(f) conference, and conduct any discovery necessary. Procedural vehicles exist to later add and/or dismiss defendants based on additional facts discovered, if necessary.
Accordingly, for the reasons discussed above, IT IS HEREBY ORDERED that plaintiff's ex parte application for leave to take expedited discovery (App. for Expedited Discovery, Dkt. No. 7) is DENIED.
IT IS SO ORDERED.