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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: DOE

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.

“Growing Trend” That Bit Torrent Doe Defendants Need Not be Time-Related

Posted in Discovery

TCYK, LLC, v. Does 1-44, No. 13 C 3825, Slip Op. (N.D. Ill. Feb. 20, 2014) (Dow J.).

Judge Dow denied various Doe defendants’ motions to grant subpoenas to their respective ISPs in this BitTorrent copyright case involving the movie “The Company You Keep” with Robert Redford and Susan Sarandon.  Of particular note, the Court held as follows:

  • Noting a split of authority, the Court went with the “growing trend” in the Northern District that Doe defendants need not have been members of its same BitTorrent swarm at the same time to be joined in a single suit.  It was enough that the Does were members of the same swarm.
  • Subpoenas served on ISPs do not unduly burden the Doe defendants.
  • The fact that a Doe claimed they could not have downloaded the movie was not a sufficient reason to quash its subpoena.  That was an issue for discovery and the case.

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).

Multi-Doe Defendant Case Would be a “Logistical Nightmare”

Posted in Federal Rules

TCYK, LLC v. Does 1-88, No. 13 C 3828, Slip Op. (N.D. Ill. June 24, 2013) (Guzman, J.).

Judge Guzman sua sponte severed Does 2-88 pursuant to Fed. R. Civ. P. 20 & 21 in this Bit Torrent copyright case.  Because the Does were not all part of the same “swarm” at the same time - although they were part of the same swarm - joinder was not proper pursuant to Rule 20.

Even if Rule 20 joinder was proper, the Court would have exercised its Rule 21 discretion to sever the eighty eight Does, quoting 101 Doe case as a “logistical nightmare.”  Pacific Century International, Ltd. v. Does 1-101, No. C-11-02533 (DMR), 2011 WL 5117424, at *3 (N.D. Cal. Oct. 27, 2011).

Bit Torrent Doe Allowed to Proceed Anonymously

Posted in Federal Rules

Malibu Media, LLC v. Reynolds, No. 12 C 6672, Slip Op. (N.D. Ill. Mar. 7, 2013) (Kendall, J.).

Judge Kendall:  1) denied defendant Doe 15’s motion to dismiss; 2) denied Doe 15’s motion to quash the subpoena of Doe 15’s internet provider; 3) granted Doe 15’s unopposed motion to remain anonymous; and 4) severed each of the 15 defendants, except for Doe 15 in this Bit Torrent copyright case.  The Court leads off with a very good description of Bit Torrent and how a “swarm” operates.  It is worth reading for anyone that is dealing with these cases. 

Motion to Dismiss

The fact that plaintiff Malibu Media filed certain copyrights as works for hire, although Malibu Media was not yet formed when those works were made (and therefore they could not be works for hire) was a mistake that Malibu Media had already taken steps to correct, and it did not require dismissal of Malibu Media’s copyright claims.

Motion to Quash

Doe 15 did not have standing to oppose Malibu Media’s subpoena to Doe 15’s internet service provider, absent a privilege claim.  But regardless of standing, Doe 15 had not made a showing that it would face an undue burden based upon the subpoena. 

Motion to Proceed Anonymously

Malibu Media did not oppose Doe 15 remaining anonymous, at least through the close of discovery.  And the Court agreed that allowing Doe 15 to proceed anonymously would prevent Malibu Media from forcing settlement based upon Doe 15’s potential embarrassment from being accused of illegally downloading pornography.  The Court, therefore, allowed Doe 15 to proceed anonymously at least until dispositive motions were decided.

Motion to Sever

The Court held that in order to be joined in the same case, defendants need not just have been members of the same swarm — which can last weeks or months depending upon the members of the swarm.  Instead, the defendants would have to have been members of the same swarm that downloaded the accused file at the same time.  Because none of the defendants, which were all part of the same swarm, were part of the same swarm at the same time, the Court severed each of the defendants, except Doe 15.  While the Court would normally retain the first defendant, in this instance the Court retained the last because it had decided several motions related to Doe 15.

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. 


Copyright Plaintiff Must Justify Doe Suit or Faces Dismissal

Posted in Pleading Requirements

AF Holdings LLC v. Doe, No. 12 C 4244, Slip Op. (N.D. Ill. Jun. 5, 2012) (Shadur, Sen. J.).

Judge Shadur sua sponte gave plaintiff AF Holdings ten days to provide a further showing justifying its suit against an anonymous John Doe in this copyright infringement suit.  The Court explained that Doe cases were not a new problem.  The Court saw them years before when bands such as REO Speedwagon filed Doe suits based upon anticipated sales of knock-off concert t-shirts.  The Court refused to consider those suits until there was a specified infringer.  The Court held that AF Holdings had not sufficiently explained why they should be allowed to pursue a case to unmask the owner of an IP address.  The Court also raised concerns that it would issue a subpoena that extended beyond the geographic bounds of the Court’s authority.  If AF Holdings was not able to answer the Court’s concerns, the case would be dismissed without prejudice.

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.  

Swarming Does Not Create Jurisdiction

Posted in Pleading Requirements

Millenium TGA v. Doe, No. 10 C 5603, Slip Op. (N.D. Ill. Sep. 26, 2011) (Manning, J.).

Judge Manning dismissed plaintiff Millenium TGA’s case against a Doe defendant identified by its computer IP address ("Doe") for lack of personal jurisdiction. Doe was not an Illinois resident. And Millenium TGA offered no proof that Doe’s actions in allegedly using Bit Torrent to download copyrighted video files were targeted at Illinois. Being part of a Bit Torrent "swarm" that downloaded a video did not rise to the level of targeting Illinois.

Shared Downloading of a Movie Makers Joinder

Posted in Discovery

First Time Videos, LLC v. Does 1-76, No. 11 C 3831, Slip Op. (N.D. Ill. Aug. 16, 2011) (Bucklo, J.).

Judge Bucklo denied the Doe defendants’ various motions to quash or dismiss in this BitTorrent copyright infringement case. Plaintiff First Time Video ("FTV") alleged that the seventy-six Doe defendants infringed plaintiff’s copyright in an adult movie using BitTorrent and in so doing engaged in a civil conspiracy. The Court denied each motion: 

·       While file-sharers have limited first amendment rights, those rights do not shelter copyright infringement. 

·       FTV sufficiently described the alleged copyrighted work by naming the movie in the complaint. 

·       Joinder of the seventy-six Does was proper. FTV alleged that the Does acted in concert to copy one video over several months as part of a BitTorrent "swarm." And the case involved common legal questions regarding copyright law. 

·       The Court recognized that other Northern District judges had severed all of the Doe defendants. Those cases, however, involved many more Does, and did not show a connection to Illinois. FTV alleged that it had traced the accused IP addresses to Illinois using geo-location technology.

·       FTV’s personal jurisdiction allegations – that FTV traced the Doe IP addresses to Illinois – were also sufficient.

Potential Sanctions for Early Discovery Inconsistent With Pleadings

Posted in Summary Judgment

Millennium TGA, Inc. v. Doe, No. 10 C 5603, Slip Op. (N.D. Ill. Aug. 24, 2011) (Manning, J.). 

Judge Manning held in abeyance Doe defendant’s motion to quash a subpoena issued to its alleged internet service provider and Doe’s motion to dismiss the case for lack of personal jurisdiction. Plaintiff Millennium TGA reasoned that the subpoenaed information would allow it to show that Doe’s actions were directed at Illinois and within the Courts’ jurisdiction. 


The Court was "troubled" by Millennium TGA’s claims that it needed jurisdictional discovery, as opposed to discovery only seeking Doe’s identity. Millennium TGA already filed a complaint alleging jurisdiction upon information and belief. The Court, therefore, ordered Millennium TGA to file a brief detailing how the information it sought was necessary. And the Court held the motions in abeyance pending that brief. The Court also warned Millennium TGA that it would initiate sanctions proceedings if Millennium TGA had not met its Fed. R. Civ. P 11 obligations.

Naming Doe Defendants in Bit Torrent Copyright Case is Shooting First, Identifying Targets Later

Posted in Discovery

Boy Racer, Inc. v. Does 1-22, No. 11 C 2984, Slip Op. (N.D. Ill. May 9, 2011) (Shadur, Sen. J.).

Judge Shadur sua sponte dismissed plaintiff Boy Racer’s copyright infringement complaint without prejudice. The Court held that Boy Racer could not "shoot first and identify [its] targets later" by suing twenty-two Doe defendants. Instead, Boy Racer was free to file its suits against identifiable individuals.

Another Case Dismissing Hundreds of Doe Copyright Defendants as Improperly Joined

Posted in Federal Rules

Light Speed Media Corp. v. Does 1-1000, No. 10 C 5604, Slip Op. (N.D. Ill. Mar. 31, 2011) (Manning, J.).

Judge Manning dismissed without prejudice 999 of the 1,000 Doe defendants in this copyright infringement suit accusing unknown individuals of using BitTorrent to download copyrighted material without sufficient permissions. As in prior cases in the Northern District (click here for similar decisions), the Court held that the Doe defendants were not properly joined pursuant to Fed. R. Civ. P. 20(a)(2)(A) because the use of a common internet service provider or network does not create sufficient commonality of action or transaction to warrant permissive joinder. The Court also held that joinder did not serve judicial interests or economy. A case with 1,000 Doe defendants could generate hundreds of factually dissimilar motions, just at the initial phase of the litigation.

The Court’s decision to sever was bolstered by its concerns about whether venue was proper. There was nothing to indicate that plaintiff or any Doe had contacts with Illinois. The Court, therefore, dismissed without prejudice each of the Does except the one individual who had been identified, although not yet named. Plaintiff was given seven days from the Order to notify the parties and their Internet Service Providers. Finally, the Court denied as premature the identified individual’s motion to dismiss for lack of personal jurisdiction. The motion was premature until the individual was actually named in the suit.

Court Cannot Force PTO to Issue a Secrecy Order

Posted in Jurisdiction

Farag v. Defense Threat Reduction Agency, No. 07 C 1688, 2007 WL 2404625 (N.D. Ill. Aug. 15, 2007) (Hart, J.).

Judge Hart dismissed for lack of subject matter jurisdiction plaintiff’s suit seeking that the Court order the PTO to place a secrecy order on plaintiff’s patent application for a process of separating an isotope from uranium for use in nuclear applications.  Plaintiff’s application is about to be published and plaintiff believes that publication of the application would allow use of his process for illicit purposes that might threaten national security.  The Invention Secrecy Act provides a patent applicant the right to appeal the issuance of a secrecy order, but not the right to appeal the denial of a secrecy order.  See 35 U.S.C. Section 181; 35 C.F.R. Section 5.4.  The Invention Secrecy Act also permits a suit for compensatory damages, but only based on damage created by a secrecy order, not the absence of one.  Finally, the Court noted that plaintiff might have a claim pursuant to the Administrative Procedure Act (the "APA"), but the APA requires that the plaintiff by harmed by the agency (PTO) action.  The Court noted that potential threat to national security based upon a review of plaintiff’s patent application was too remote and general to create standing pursuant to the APA.  As a result, the Court dismissed plaintiff’s complaint.  It is also interesting to note, the Court instructed plaintiff to file any appeal with the Seventh Circuit, instead of the Federal Circuit despite the fact that the case is focused on PTO procedure.