United States District Court, D. Connecticut
RULING ON PLAINTIFF'S MOTION FOR LEAVE TO SERVE A
THIRD PARTY SUBPOENA PRIOR TO A RULE 26(f) CONFERENCE [Doc.
CHARLES S. HAIGHT, JR. Senior United States District Judge
copyright infringement action, Plaintiff Malibu Media LLC
("Plaintiff" or "Malibu Media") asserts
that defendant John Doe, identified only by his Internet
Protocol ("IP") address, has unlawfully distributed
eight of Plaintiff's copyrighted adult films by using
BitTorrent, a "peer-to-peer file sharing system[ ] used
for distributing large amounts of data, including, but not
limited to, digital movie files." Doc. 1, at ¶
11. Pursuant to Rule 26(d)(1), Fed. R. Civ. P., Plaintiff has
moved for leave to serve a third-party subpoena on
Defendant's internet service provider ("ISP"),
Optimum Online, for the limited purpose of discovering
Defendant's identity so that Plaintiff may serve
Defendant with process and proceed in litigating this case.
Doc. 7. For the reasons Plaintiff has presented in its motion
and supporting papers, and the discussion detailed below, the
Court will grant the motion for good cause, as limited by the
conditions delineated herein.
general, parties "may not initiate discovery prior to
satisfying the meet and confer requirement of Fed.R.Civ.P.
26(f)." Digital Sin, Inc. v. Does 1-176, 279
F.R.D. 239, 241 (S.D.N.Y. 2012). Specifically, under Rule
26(d)(1), Fed. R. Civ. P., "[a] party may not seek
discovery from any source before the parties have conferred
as required by Rule 26(f), " except in limited
proceedings delineated in Rule 26(a)(1)(B), or "when
authorized by these rules, by stipulation, or by court
order." "[C]ourts may in some instances order
earlier discovery." Digital Sin, 279 F.R.D. at
241 (citing Fed.R.Civ.P. 26(d)). See, e.g.,
Malibu Media, LLC v. John Doe Subscriber Assigned IP
Address 184.108.40.206, No. 1:16-CV-02462 (AJN), 2016 WL
2894919, at *2 (S.D.N.Y. May 16, 2016) ("[A] party may
engage in discovery before such a [26(f)] conference pursuant
to a court order.") (citing Fed.R.Civ.P. 26(d)(1)).
considering whether to grant a motion for expedited discovery
prior to a Rule 26(f) conference, courts apply a
"flexible standard of reasonableness and good
cause." Malibu Media, LLC, 2016 WL 2894919, at
*2 (gathering cases). See also Arista Records LLC v. Does
1-4, 589 F.Supp.2d 151, 152-53 (D. Conn. 2008) (applying
"good cause" standard to request for expedited
discovery) (citation omitted). See generally 8A
Charles Alan Wright & Arthur R. Miller, Federal
Practice and Procedure § 2046.1 (3d ed. 2011)
("Although [Rule 26(d)] does not say so, it is implicit
that some showing of good cause should be made to justify
such an order, and courts presented with requests for
immediate discovery have frequently treated the question
whether to authorize early discovery as governed by a good
Second Circuit, in evaluating subpoenas seeking identifying
information from ISPs regarding subscribers who are parties
to copyright infringement litigation, courts have examined
the following factors:
(1) [the] concrete[ness of the plaintiff's] showing of a
prima facie claim of actionable harm, . . . (2) [the]
specificity of the discovery request, . . . (3) the absence
of alternative means to obtain the subpoenaed information, .
. . (4) [the] need for the subpoenaed information to advance
the claim, . . . and (5) the [objecting] party's
expectation of privacy.
Records, LLC v. Doe 3, 604 F.3d 110, 119 (2d Cir. 2010)
(quoting Sony Music Entm't, Inc. v. Does 1-40,
326 F.Supp.2d 556, 564-65 (S.D.N.Y. 2004)). If
"[a]pplication of these 'principal factors'
confirms that the Plaintiff is entitled" to the
requested subpoena, the motion for early discovery will be
granted for "good cause." Malibu Media,
LLC, 2016 WL 2894919, at *2.
the principal factors in detail, the plaintiff must first
state a prima facie claim for copyright infringement.
See, e.g., Sony Music Entm't Inc., 326 F.Supp.2d
at 565. Specifically, the plaintiff must show: "(1)
ownership of a valid copyright, and (2) copying of
constituent elements of the work that are original."
Feist Publ'ns, Inc. v. Rural Tel. Serv. Co.,
Inc., 499 U.S. 340, 361 (1991). See also Urbont v.
Sony Music Entm't, 831 F.3d 80, 88 (2d Cir. 2016)
owner of a copyright has exclusive rights to reproduce that
copyrighted work and to distribute copies to the public by
sale, transfer of ownership, rent, lease, or lending. 17
U.S.C. § 106. Moreover, a plaintiff is entitled to seek
statutory damages and attorney's fees under the United
States Copyright Act if its copyrighted work was registered
within three months of the first date of publication. 17
U.S.C. §§ 411 (c)(2), 501.
plaintiff makes "a concrete, prima facie case of
copyright infringement by alleging ownership of the
registered copyright and alleging unlawful downloading,
copying, and distribution of this work by specifying the type
of technology used, the IP address from which the file was
accessed and shared, and the date and time of the
infringement." Malibu Media, LLC v. Doe, No.
14-CV-4808 (JS)(SIL), 2016 WL 4574677, at *6 (E.D.N.Y. Sept.
1, 2016) (quoting Malibu Media, LLC v. John Does
1-11, No. 12-CV-3810 (ER), 2013 WL 3732839, at *6
(S.D.N.Y. July 16, 2013)). See also Sony Music Entm't
Inc., 326 F.Supp.2d at 565-66 ("[T]he use of P2P
[peer-to-peer] systems to download and distribute copyrighted
music has been held to constitute copyright
infringement.") (collecting cases); Patrick Collins,
Inc. v. John Doe 1, 945 F.Supp.2d 367, 375 (E.D.N.Y.
2013) ("Indeed, every court to have addressed this issue
has found a sufficiently alleged copyright infringement claim
based on BitTorrent technology, even when the defendant was
merely identified with an IP address.").
Media has alleged that it is the owner of the adult films at
issue. See Doc. 1, ¶ 23; Doc. 1-2 (list of
"Copyrights-In-Suit for IP Address 220.127.116.11").
In addition, Malibu Media has made a plausible showing that
wrongful "copying" of that work has occurred by
alleging that its investigator, IPP International UG
("IPP"), has established a direct IP connection
with the Defendant's IP address, as set forth in
Plaintiff' Exhibit A to its Complaint. Doc. 1, ¶ 18.
In particular, Plaintiff has alleged that its investigator,
IPP, has established that Defendant's IP address was used
to unlawfully download eight of Plaintiff's copyrighted
movies from the BitTorrent file distribution network.
Id., ¶¶ 18-21; see also Doc. 1-1
and 1-2 (Ex. A & B, respectively). Under these
circumstances, Plaintiff has stated a prima facie case for
actionable harm due to copyright infringement.
in order to show "good cause" for early discovery,
the plaintiff must narrowly tailor and specify the
information sought by the discovery request. The information
requested in the subpoena must be limited, seeking
"concrete and narrow information: the name and address
of the subscriber associated with Doe [Defendant's] IP
address . . . . " John Wiley & Sons, Inc. v. Doe
Nos. 1-30, 284 F.R.D. 185, 190 (S.D.N.Y. 2012). Courts
have labeled the subscriber's identity and address as
"highly specific, ” Malibu Media, 2016 WL
4574677, at *6, recognizing that "Plaintiffs clearly
need identification of the putative John Does in order to
serve process on them and prosecute their claims, "
UN4 Prods., Inc. v. Doe-18.104.22.168, No.
17-CV-3278 (PKC) (SMG), 2017 WL 2589328, at *3 (E.D.N.Y. June
14, 2017) (citation and internal quotation marks omitted).
See also Sony Music Entm't Inc., 326 F.Supp.2d
at 566 ("Ascertaining the identities and residences of
the Doe defendants is critical to plaintiffs' ability to
pursue litigation, for without this information, plaintiffs
will be unable to serve process."); Malibu Media,
LLC, 2013 WL 3732839, at *5 n.1 ("Discovery
requests must be 'sufficiently specific' to establish
a reasonable likelihood that the discovery request would lead
to identifying information that would make possible service
upon particular defendants who could be sued in federal
court.'") (quoting Sony Music Entm't
Inc., 326 F.Supp.2d at 566).
case at bar, Plaintiff requests to serve a subpoena to obtain
"the true name and address of the Defendant to whom the
ISP assigned an IP address as set forth on Exhibit A in the
Complaint." Doc.7-5, ¶ 2. Because the requested
subpoena is sufficiently specific, the second principal
factor weighs in favor of the Court granting Plaintiff's
motion for leave to serve the subpoena.
there must be no "alternative means to obtain the
subpoenaed information." Arista Records, 604
F.3d at 119 (quoting Sony Music Entm't Inc., 326
F.Supp.2d at 564-65). In the case at bar, Plaintiff
"knows Defendant only by his or her IP address."
Doc. 7-1, at 15. Plaintiff asserts that "[t]he
government, law enforcement officials, criminal and civil
judges, and ISPs alike all acknowledge that subpoenaing an
ISP is the only way to identify an internet subscriber."
Id. That is because "[t]here are no
publicly-available databases or 'yellow pages' that
can identify an individual by an IP address."
Id. Moreover, ISP records "are the only
available evidence that allows [one] to investigate who
committed crimes on the Internet." Id.
(emphasis in original)(quoting Jason Weinstein, Deputy
Assistant Attorney General, Criminal Division,
"Statement Before the Committee re Judiciary
Subcommittee on Crime, Terrorism, and Homeland Security,
United States House of Representatives (January 25, 2011)).
Therefore, "issuing a subpoena to the responsible ISP is
the only way to identify the subscriber of an IP
address." Id., at 16 (citing United States
v. Chamberlin, No. 09-CR-6169 (CJS), 2010 WL 1904500, *2
(W.D.N.Y. May 12, 2010) (subpoenaing an ISP to identify IP
address subscriber) and collecting cases). In sum, Plaintiff
has established that it lacks alternative means to obtain the
subpoenaed information, namely, Defendant's identity and
the plaintiff must show that the subpoenaed information is
necessary to advance the claim at issue. As stated
supra, Malibu Media cannot learn the
subscriber's identity without the subpoenaed information
and consequently cannot serve process on Defendant. See,
e.g., Sony Music Entm't Inc., 326 F.Supp.2d at 566.
See also Arista Records LLC, 589 F.Supp.2d at 153
("Because learning the true identities of the
pseudonymous individuals alleged to have violated
Plaintiffs' copyrights is essential to their prosecution
of this litigation, Plaintiffs have demonstrated their need
for expedited discovery."). As one district court
concluded in this Circuit, "[w]ithout learning the
Defendant's identity and address, the Plaintiff ...