United States District Court, N.D. California
ORDER DENYING PLAINTIFF’S MOTION TO DISMISS
WILLIAM ALSUP, UNITED STATES DISTRICT JUDGE
copyright infringement action, the copyright owner moves to
dismiss the accused infringer’s counterclaim for
declaratory judgment of non-infringement. For the reasons
stated below, the copyright owner’s motion is Denied.
Malibu Media, LLC, made and distributed pornographic videos
on a subscription-based website. It has filed 178 copyright
infringement actions in our district in the past year. In the
interest of judicial economy, all of Malibu Media’s
actions in this district were assigned to the undersigned
of its complaints, Malibu Media named an individual
identified only by his or her Internet Protocol address,
which is an identifier assigned to each Internet subscriber
by the subscriber’s Internet service provider. Here,
defendant is named as John Doe Subscriber Assigned IP Address
184.108.40.206. As with all of its other cases, Malibu Media
contends that defendant used his Internet connection to
download and distribute numerous of its copyrighted works
using a file-sharing protocol called BitTorrent. Here, Malibu
Media accuses defendant of infringing 23 works.
BitTorrent protocol called for splitting large files, such as
Malibu Media’s videos, into many smaller pieces. Once a
file was broken down into those pieces, users of the protocol
could then copy and share the pieces of the larger file with
each other, and once a user received all of the pieces of a
given file, each of which may have come from a different
user, software (called a BitTorrent “client”) on
the user’s computer reassembled the pieces into a
complete file. This scheme facilitated an efficient and
decentralized distribution scheme as compared to sharing a
single large file from a single host site.
Media hired IPP International UG, which utilized the
BitTorrent protocol to download several of Malibu
Media’s own files from the Internet. IPP monitored the
IP addresses of the distributors of each piece of each file
it received. Malibu Media alleges that IPP received at least
one piece of each of 23 individual videos from the
above-captioned IP address.
Media seeks statutory damages of at least $17, 250 for
defendant’s alleged infringement of twenty-three videos
($750 per work), with a potential for much greater liability
if infringement is found to be willful or if the jury finds
Malibu Media is entitled to damages on the higher end of the
range provided by statute.
answer, defendant, who is represented by Attorney Joseph C.
Edmonson, filed a counterclaim for declaratory judgment of
non-infringement, which mirrors his denial of liability for
Malibu Media’s affirmative claim of infringement.
Malibu Media now moves to dismiss defendant’s
counterclaim. This order follows full briefing and a
properly-noticed hearing at which neither side appeared,
although the case was called and held over until the end of
the calendar in case counsel arrived late.
Media argues that defendant’s counterclaim merely
repackages his denial of infringement and thus should be
dismissed. It cites various decisions noting that the Court
has no duty to declare the rights and legal relations of
interested parties and that the Court discretion to dismiss
counterclaims that are mirror images of the claims. See,
e.g., Leadsinger, Inc. v. BMG Music Pub., 512
F.3d 522, 533 (9th Cir. 2008).
Media is correct that defendant’s counterclaim is
duplicative of his denial of liability (indeed,
defendant’s answer to Malibu Media’s affirmative
claim incorporates-by-reference the allegations of
defendant’s counterclaim and otherwise denies all
allegations). Malibu Media is also correct that the district
court has discretion to dismiss defendant’s
counterclaim. Nevertheless, Malibu Media’s practical
arguments for why the undersigned should exercise that
discretion here are unpersuasive.
Media argues that permitting defendant’s counterclaim
to proceed would require it to file an answer in which it
would deny all the allegations and refer back to the
complaint. This will, however, impose a negligible burden.
Malibu Media also contends the declaratory judgment
counterclaim would confuse a jury. Not really, however, a
jury would never need to know that the case involves an
affirmative claim of infringement and a declaratory judgment