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
ten 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"),
Frontier Communications, 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 126.96.36.199, 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, 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.
Arista 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 MediaLLC,
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, 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) (same).
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, 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
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 188.8.131.52"). 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 ten 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-184.108.40.206, 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, 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, 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, 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.7-1, ¶ 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, 326 F.Supp.2d at
564-65). In the case at bar, Plaintiff "only knows
Defendant by his IP address." Doc. 7-2, at 1. 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. at 10.
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 11 (citing United States