Malibu Media, LLC v. Doe

          RULING ON PLAINTIFF'S MOTION FOR LEAVE TO SERVE A THIRD PARTY SUBPOENA PRIOR TO A RULE 26(f) CONFERENCE [Doc. 7]

          CHARLES S. HAIGHT, JR. SENIOR UNITED STATES DISTRICT JUDGE

         I. INTRODUCTION

         In this copyright infringement action, Plaintiff Malibu Media LLC, d/b/a "X-Art.com" ("Plaintiff" or "Malibu Media") asserts that defendant John Doe, identified only by his Internet Protocol ("IP") address, has unlawfully distributed six of Plaintiff's copyrighted adult films between May 23, 2018, and August 4, 2018, 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."^[1] Doc. 1, ¶¶ 9, 11, 21-24, Ex. A. 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, at 1. 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.

         II. DISCUSSION

         In 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 173.68.5.86, 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)).

         When 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 cause standard.").

         In the 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 Media, LLC, 2016 WL 2894919, at *2.

         Examining 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); Arista Records, LLC, 604 F.3d at 117.

         The 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.

         A 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." STRIKE 3 HOLDINGS, LLC, Plaintiff, v. JOHN DOE, subscriber assigned IP address 47.18.94.18, Defendant, No. 3: 18-CV-1332 (CSH), 2018 WL 4846676, at *2 (D. Conn. Oct. 5, 2018) (quoting Malibu Media, LLC v. Doe, No. 14-CV-4808 (JS)(SIL), 2016 WL 4574677, at *6 (E.D.N.Y. Sept. 1, 2016)). 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.").

         Malibu Media has alleged that it is the owner of the adult films at issue. See Doc. 1, ¶ 30; Doc. 1-1 (list of six "Copyrights-In-Suit for IP Address 67.86.53.252"). 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 TCP/IP connection with the Defendant's IP address, as set forth in Plaintiff's Exhibit A to its Complaint.^[2] Doc. 1, ¶ 18. In particular, Plaintiff has alleged that its investigator, IPP, has established that Defendant's IP address was used to unlawfully download six of Plaintiff's copyrighted movies from the BitTorrent file distribution network. Id., ¶¶ 18-26; see also Doc. 1-1 and 1-2 (Ex. A & B, respectively).^[3] Under these circumstances, Plaintiff has stated a prima facie case for actionable harm due to copyright infringement.

         Second, 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-173.68.177.95, 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 v. John Does 1-11, No. 12 Civ. 3810 (ER), 2013 WL 3732839, at *5 n.1 (S.D.N.Y. 2013) ("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).

         In the 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.

         Third, 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) (collecting cases). In sum, Plaintiff has established that it lacks alternative means to obtain the subpoenaed information, namely, Defendant's identity and address.

         Fourth, 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 will be unable to serve process and pursue its claim." Malibu Media, LLC v. Doe, No. 15-CV-3504 (JFB) ...