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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: BitTorrent

Alleged seeding of copyrighted material on BitTorrent is not Copyright Misuse

Posted in Pleading Requirements

Malibu Media, LLC v. Doe, No. 13 C 3648, Slip Op. (N.D. Ill. Jun. 9, 2014) (Kennelly, J.).

Judge Kennelly granted in part plaintiff Malibu Media’s motion to dismiss Doe defendant’s counterclaim and certain of its nineteen affirmative defenses in this BitTorrent copyright infringement case.

Doe’s counterclaim was not appropriate because it sought no affirmative relief, just a determination that its affirmative defenses were meritorious.  The counterclaim was, therefore, dismissed.

Doe did not properly plead copyright misuse.  Doe pled that Malibu made a business out of filing copyright litigations and that plaintiff Malibu Media seeded BitTorrent with its movies to generate copyright infringement.  But those allegations are not using the limited copyright monopoly to control something outside the bounds of the monopoly.

Doe did not properly plead estoppel.  The allegations that Malibu seeded its movies to encourage infringement does not meet the requirement that Malibu did something to mislead Doe into believing that Doe’s acts were condoned or otherwise legal.

Doe sufficiently pled unclean hands.  Doe alleged that Malibu created child pornography which would not be patentable and should not be enforceable. While it was unclear from the law whether the claim could stand, the Court allowed it at the early stage of the case until it could be further developed.

Doe sufficiently pled an implied license based upon Malibu’s alleged seeding of its copyrighted material.  It was not clear that the alleged seeding met each prong of an implied license defense, but at the early stage the Court allowed the defense to remain in the case.

Doe did not sufficiently plead the single satisfaction rule.  There was no case law suggesting that Malibu could only recover a single statutory damages award for a copyrighted work.  Rather, the law suggested Malibu could recover separately from each infringer.

Doe did not sufficiently plead mitigation of damages because it was irrelevant as Malibu had elected statutory damages.

BitTorrent “Swarm” Must be Related in Time to be Joined in One Action

Posted in Discovery

Malibu Media, LLC v. Does 1-68, No. 12 C 6675, Slip Op. (N.D. Ill. Sep. 27, 2013) (Lee, J.).

Malibu Media, LLC v. Does 1-42, No. 12 C 6677, Slip Op. (N.D. Ill. Sep. 27, 2013) (Lee, J.).

Judge Lee granted various Doe defendants motion to sever their cases as unrelated, denied motions to quash subpoenas to the Doe’s ISPs and allowed Does to proceed anonymously at least through discovery in this BitTorrent copyright case.  The Court handled the two cases, both by plaintiff Malibu Media, in a single opinion because of the similarity of the various Does’ motions to quash subpoenas to their respective ISPs and/or to sever the cases of the various Does

Considering the motions to sever, the Court noted that the Seventh Circuit had not ruled on whether alleged members of a single BitTorrent “swarm” could be combined in a single suit, even if there are no allegations that the Does were a part of the swarm at or about the same time.  Although district courts had decided the issue both ways, the Court, citing a Judge Kendall decision (Malibu Media, LLC v. Reynolds, No. 123 C 6672, 2013 WL 870618, at *10 (N.D. Ill. Mar. 7, 2013), held that the better approach was requiring that Does have been part of the same swarm at or about the same time.  The Court also held that Malibu Media’s allegation that each Doe had downloaded the same file containing one element of the copyrighted work was not sufficient to avoid severing, without an allegation regarding the timing of the Does’ alleged participation in the swarm.  Because Malibu Media had not alleged that the Does were part of the same swarm at “roughly” the same time, the Court severed the cases against each remaining Doe.

The Court denied a motion to quash an ISP subpoena based upon the Doe’s right to privacy in its personal information provided to the ISP.  The Doe gave up any right to privacy in its personal information as to the ISP by providing its personal information to the ISP during registration.

While every party accused of downloading pornographic material did not necessarily have a right to proceed anonymously, the Court balanced that against the possibility that the ISP address owner did not necessarily do the accused downloading and allowed the Doe defendant to proceed anonymously at least through discovery.  Additionally, Malibu Media did not object to the Doe proceeding anonymously, as long as Malibu Media could be made aware of the Doe’s identity, which the Court held that it would.

Plaintiff May Not Communicate with Does in BitTorrent Case by Email or Phone

Posted in Discovery

The Thompsons Film, LLC v. Does 1-60, Slip Op. 13 C 2368 (N.D. Ill. Sep. 6, 2013) (Gottschall, J.).

Judge Gottschall denied two Doe defendants’ motions to quash subpoenas to their respective ISPs seeking, among other things, their identities based upon their IP addresses in this BitTorrent copyright case.  The Court held that a copyright holder alleging infringement had the right to discovery the potential identity of the accused infringer, it did not matter that someone other than the owner of the IP address may have actually performed the accused infringement.

The Court did, however, allow the Doe defendants to proceed anonymously because of the “substantial possibility” that the IP address owner did not commit the accused acts, but rather someone else did using the Doe’s network.  The Court ordered plaintiff not to identify any Doe in a pleading filed with the Court except by IP address or by Doe#, absent a further order of the Court allowing public disclosure of the Doe’s identify.  The Court also limited the subpoenas to seeking the Doe’s name and address.  Plaintiff was not entitled to phone numbers or email addresses, and plaintiff was not allowed to contact the Does directly by either email or phone.

Failure to Serve Complaint Courtesy Copies Leads to Fine

Posted in Local Rules

Malibu Media, LLC v. Doe, No. 14 C 693, Slip Op. (N.D. Ill. Feb. 7, 2014) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered plaintiff Malibu Media to serve a courtesy copy of its copyright complaint on the Court in compliance with Local Rule 5.2(f) and the Court’s website.  Malibu Media also was ordered to pay a $100 fine for delayed compliance with Local Rule 5.2(f).

Court Maintains Secrecy of Copyright Doe Defendants Because of “Substantial Possibilit[y]” of Misnaming

Posted in Discovery

Osiris Entertainment, LLC v. Does 1-38, No. 13 C 4901, Slip Op. (N.D. Ill. Aug. 20, 2013) (Tharp, J.).

Judge Tharp granted plaintiff Osiris Entertainment’s Fed. R. Civ. P 26(d) motion to take expedited discovery prior to a Rule 26 conference in order to discover the potential identities of the thirty eight Doe defendants otherwise only identified by their respective IP addresses in this copyright case involving the alleged infringement of the movie Awaken via BitTorrent. 

As an initial matter, the Court sua sponte considered whether the thirty-eight Does were properly joined.  Recognizing a district split, that mirrors a national split among district courts, the Court held that members of the same swarm may be joined in a single suit even if their direct participation in the swarm did not overlap in time, explaining:

As noted above, BitTorrent requires a cooperative endeavor among those who use the protocol.  Every member of a swarm joins that cooperative endeavor knowing that, in addition to downloading the file, they will also facilitate the distribution of that identical file to all other members of the swarm, without regard to whether those other members were in the swarm contemporaneously or whether they joined it later.  In that light, permitting joinder among non-contemporaneous swarm participants does not seem novel or extreme; the law governing joint ventures and conspiracies, for example, clearly permits plaintiffs to proceed against groups of defendants who engaged in a cooperative endeavor to facilitate an unlawful object whether or not all of the members of the group took part in all of the actions of the group and without regard to when the members joined the group.

Citations omitted.  The Court did, however, note that there would be some requirement of temporal proximity because at some amount of separation the analogy would break down.  But in this instance, the alleged Does were involved over a “relatively brief” period.

Having determined that joinder was proper at least at the initial stages of the case, the Court granted Osiris Entertainment’s motion to issue subpoenas aimed at identifying the Does based upon their alleged IP addresses.  The Court, however, prohibited Osiris Entertainment from publishing the Doe’s alleged identities without leave of Court, noting that there was a “substantial possibility[y]” that the individuals associated with a particular IP address were not the individuals that downloaded the allegedly copyrighted material. 

Court Allows Joinder of BitTorrent Does for Early Stages of Case

Posted in Federal Rules, Pleading Requirements

Purzel Video GmbH v. Does 1-99, No. 13 C 2501, Slip Op. (N.D. Ill. Aug. 16, 2013) (Gottschall, J.).

Judge Gottschall denied various Doe defendants’ motions to quash third party subpoenas to their respective internet service providers (ISPs) as well as motions to sever and dismiss individual Does from this action.  This is a BitTorrent case in which the Does are accused of being part of a “swarm” that downloads a copyright file, in this case the motion picture “Trade of Innocents.”  Of particular interest, the Court held as follows:

  • The Court avoided a district split in whether Doe defendants have standing to quash a third-party ISP subpoena, holding that plaintiff Purzel Video was entitled to the information sought in the subpoenas and that the Doe defendants were not unduly burdened by the third-party subpoenas.  The fact that the customer associated with the identified IP address may not be the actual infringer was not a basis for quashing the subpoenas.
  • The Court ordered Purzel Video not to publish any Doe’s identity without leave of Court.  And to further limit “potential for harassment,” the Court held that only the bill payer and mailing address related to the IP address were discoverable.  Purzel Video was not entitiled to phone numbers or email addresses.  Purzel was also required to communicate with Does via their respective counsel to the extent that they had counsel.
  • Recognizing a nation-wide split in authority as to how closely connected members of a “swarm” must be in order to be joined in a single suit, the Court sided with Judge Castillo, holding that it was sufficient that the Does downloaded the same initial seed file intending to use other computers to download pieces of the copyrighted works and to allow the Doe’s computer to be used by others in the swarm to download the same work.  The Court also noted that while not all Does downloaded the files at the same time, the downloads occurred during the same month.
  • The Court declined to exercise its Fed. R. Civ. P. 21 discretion to sever the cases, although without prejudice to reconsider at a later date.  In the early stages of the case, the issues amongst Does remained relatively common and joinder made judicial sense.  It is possible that varying and opposing defenses might eventually change that, at which point the Court would be willing to consider severing some or all of the cases.
  • Purzel Video’s civil conspiracy claim was preempted by copyright law because it seeks to vindicate the same rights as a copyright claim.
  • Purzel Video’s Local Rule 3.2 corporate disclosure was deficient because it did not list all of the members of Purzel Video.  A GmbH is a German LLC, and Local Rule 3.2 requires disclosure of all members of LLC’s.

Court Allows Joinder of BitTorrent Does for Early Stages of Case

Posted in Pleading Requirements

The Bicycle Peddler, LLC v. Does 1-99, No. 13 C 2375, Slip Op. (N.D. Ill. Aug. 13, 2013) (Gottschall, J.).

Judge Gottschall denied various Doe defendants’ motions to quash third party subpoenas to their respective internet service providers (ISPs) as well as motions to sever and dismiss individual Does from this action.  This is a BitTorrent case in which the Does are accused of being part of a “swarm” that downloads a copyright file, in this case the motion picture “Trade of Innocents.”  Of particular interest, the Court held as follows:

  • The Court avoided a district split in whether Doe defendants have standing to quash a third-party ISP subpoena, holding that plaintiff Bicycle Peddler was entitled to the information sought in the subpoenas and that the Doe defendant was not unduly burdened by the third-party subpoenas.  The fact that the customer associated with the identified IP address may not be the actual infringer was not a basis for quashing the subpoenas.
  • The Court ordered Bicycle Peddler not to publish any Doe’s identity without leave of Court.
  • Recognizing a nation-wide split in authority as to how closely connected members of a “swarm” must be in order to be joined in a single suit, the Court sided with Judge Castillo, holding that it was sufficient that the Does downloaded the same initial seed file intending to use other computers to download pieces of the copyrighted works and to allow the Doe’s computer to be used by others in the swarm to download the same work.  The Court also noted that while not all Does downloaded the files at the same time, the downloads occurred over sixteen days.
  • The Court declined to exercise its Fed. R. Civ. P. 21 discretion to sever the cases, although without prejudice to reconsider at a later date.  In the early stages of the case, the issues amongst Does remained relatively common and joinder made judicial sense.  It is possible that varying and opposing defenses might eventually change that, at which point the Court would be willing to consider severing some or all of the cases

BitTorrent Doe Defendants Must be Part of the Same “Swarm” at the Same Time to be Joined in Suit

Posted in Pleading Requirements

Zambezia Film Pty, Ltd v. Does, No. 13 C 1323 & 1741, Slip Op. (N.D. Ill. Mar. 20, 2013) (Shadur, Sen. J.).

Judge Shadur sua sponte ordered plaintiff Zambezia Film to identify those Doe defendants that could be properly joined pursuant to Fed. R. Civ. P. 20(a)(2) in this BitTorrent “swarm” copyright case.  The Court would dismiss the remaining defendants.  Relying upon a Michigan Law Review student note — The Case Against Combating BitTorrent Piracy Through Mass John Doe Copyright Infringement Lawsuits, 111 Mich. L. Rev. 283 (2012) — the Court required that Zambezia Film identify those Does that were both part of the same swarm and part of the same swarm at the same time as one another.  Any other defendants would be dismissed.

 

Doe Defendant Allowed to Use Pseudonym in Porn Download Case to Avoid Abusive Litigation Tactics

Posted in Discovery

Sunlust Pictures, LLC v. Does 1-75, No. 12 C 1546, Slip Op. (N.D. Ill. Aug. 27, 2012) (Tharp, J.).

Judge Tharp denied Doe defendant’s motion to quash a subpoena seeking his identifying information from his cable provider in this BitTorrent copyright case, but allowed the Doe to proceed in the suit using a pseudonym.  The Court also denied Doe’s motion to sever the Doe defendants.  As an initial matter, while a party to a suit usually has no standing to move to quash a third party subpoena, there is an exception in cases such as this one where the subpoena implicates that party’s privacy.  But Doe’s motion to quash was based upon an argument that the 75 Does were not properly joined.  That, however, is not a valid ground for quashing a subpoena.

Plaintiff Sunlust’s joinder was not inappropriate in this case, despite district courts’ increasing concern regarding improper joinder of multiple Does in pornographic downloading cases around the country.  Sunlust alleged that each Doe participated simultaneously in a single BitTorrent “swarm” and that the Does were sharing portions of the file between themselves as a part of that process.  A swarm is the collective act of downloading a particular file.  And joinder was further supported by Sunlust’s civil conspiracy claim alleging that the Does, as part of a single swarm, were engaged in a conspiracy to unlawfully distribute the copyrighted movie.  Furthermore, the Does faced common legal and factual questions regarding Sunlust’s copyright claims.

In order to avoid abusive litigation tactics, the Court ordered that Sunlust only contact Doe through counsel and that Doe could proceed using a pseudonym, at least during discovery. 

 

Court Orders Doe Disclosure After Time to Object

Posted in Discovery

Pacific Century Int’l. v. Does 1-31, No. 11 C 9064, Slip Op. (N.D. Ill. Jun. 12, 2012) (Leinenweber, J.).

Judge Leinenweber granted plaintiff Pacific Century International’s (“PCI”) Fed. R. Civ. P. 45(c)(2)(B) motion to compel subpoena compliance, in this BitTorrent copyright suit.  The subpoena sought identifying information from Comcast for certain of its internet service customers.  PCI had each Doe defendant’s IP address – a number assigned to a computer using the internet – but not the names, addresses or other identifying information associated with that computer or internet service account.  Recognizing that courts in the Northern District and elsewhere were split on the issue, the Court held that joinder was proper based upon the allegation that the Does were involved in the same BitTorrent “swarm” used to download the alleged infringing video.  The Court also noted that all of the Does sued in this case appeared to be Illinois residents based upon their IP addresses, unlike the Does in many other cases. 

The Court also noted the concern that PCI and similarly-situated plaintiffs were using the threat of being named in these suits to unfairly coerce settlements.  But getting the identifying information was necessary to move the case forward.  The Court, therefore, ordered Comcast to notify its customers of the pending disclosure pursuant to 47 U.S.C. § 551(c)(2) and then gave each such defendant thirty days from notice to object or otherwise move the Court for relief.  Comcast was to turn over the identifying information only after any such objections were resolved.