United States District Court, W.D. North Carolina, Asheville Division
MEMORANDUM OF DECISION AND ORDER
REIDINGER UNITED STATES DISTRICT JUDGE
MATTER is before the Court on the Plaintiff's
Motion for Leave to Take Discovery Prior to Rule 26(f)
Conference. [Doc. 4].
Venice PI, LLC, (“Plaintiff”) filed a Complaint
for copyright infringement on August 14, 2017, alleging that
unknown individuals named as Defendants Does 1-9 (“Does
1-9”) committed violations of the Copyright Act of
1976, 17 U.S.C. §§ 101 et seq. (the
“Copyright Act”) and seeking injunctive relief,
statutory damages, and attorney's fees and
costs. On the same day, the Plaintiff filed the
instant motion for leave to issue third-party subpoenas prior
to a Rule 26(f) conference on one or more Internet Service
Providers (“ISPs”) of Does 1-9 in order to obtain
information sufficient to identify each Doe Defendant so that
Plaintiff can serve Does 1-9 with Plaintiff's Complaint.
Specifically, the Plaintiff seeks by way of these subpoenas
“the name and address of the account holders; current
and permanent addresses; telephone numbers; email addresses;
and, the Media Access Control (“MAC”)
address.” [Doc. 5 at 2].
the factual allegations of the Plaintiff's Complaint as
true, the following is a recitation of the relevant facts.
Plaintiff is the claimant and holder of a copyright in the
motion picture Once Upon a Time in Venice (the “motion
picture”), [Complaint, Doc. 1 at 1; Doc. 1-1], which is
protected by the Copyright Act and registrations, including
PA 2-039-391, dated January 27, 2017. [Id. at
¶¶ 6, 7; Doc. 1-1]. BitTorrent is a peer-to-peer
file sharing system and “has become one of the most
common systems for users to illegally dispense and share huge
amounts of data in digital format, including motion
pictures.” [Id. at ¶ 16]. The Plaintiff
has traced to North Carolina “many confirmed
instances” of illegal downloading and distributing of
the motion picture in the BitTorrent network, [Id.
at ¶ 10], and “has brought this action as a result
of the unauthorized copying and transferring of this motion
picture by unknown defendants who are believed to reside in
this District.” [Doc. 5 at 1].
Plaintiff has employed an investigator, Maverickeye, who
observed the Doe Defendants as having distributed the motion
picture. [Doc. 1 at ¶ 11]. Due to the nature of the
infringement, however, Maverickeye is only able to identify
the Doe Defendants in relation to each defendant's
Internet Protocol (“IP”) address, the ISP who
provided service to each defendant, and the city and county
in which the alleged infringement occurred. [Ex. 2 to
Complaint, Doc. 1-2; Doc. 5 at 2]. As such, the only way the
Plaintiff may identify Does 1-9 is to subpoena the ISP
pursuant to Federal Rule of Civil Procedure 45.
plaintiff's right to issue Rule 45 subpoenas on third
parties in order to identify unknown defendants under these
circumstances is well-established. The five-factor test set
forth in Sony Music Entertainment v. Does 1-40, 326
F.Supp.2d 556 (S.D.N.Y. 2004), a copyright infringement case
with substantially similar facts, determines whether an
anonymous defendant's identity is shielded from
disclosure by the First Amendment. These factors include:
“(1) a concrete showing of a prima facie claim of
actionable harm; (2) specificity of the discovery request;
(3) the absence of alternative means to obtain the subpoenaed
information; (4) a central need for the subpoenaed
information to advance the claim; and (5) the party's
expectation of privacy.” 326 F.Supp.2d at 564-65
(internal citations omitted); Arista Records, LLC v. Doe
3, 604 F.3d 110 (2nd Cir. 2010) (upholding application
of the Sony factors as “an appropriate general
standard for determining whether a motion to quash, to
preserve the objecting party's anonymity, should be
granted” in anonymous defendant's appeal in
copyright infringement case). Here, all five factors weigh in
favor of allowing the Plaintiff to issue Rule 45 subpoenas
prior to the Rule 26(f) conference.
the Plaintiff's Complaint states a prima facie
claim of copyright infringement. “Copyright
infringement occurs when a person ‘violates any of the
exclusive rights of the copyright owner.' 17 U.S.C.
§ 501(a). Therefore, the two elements of an infringement
claim are (1) ownership of a valid copyright and (2)
encroachment upon one of the exclusive rights afforded by the
copyright.” Elektra Entertainment Group, Inc. v.
Doe, No. 5:08-cv-1159-FL, 2008 WL 5111886 (E.D. N.C.
Dec. 4, 2008) (Flanagan, J.) (citing Avtec Systems, Inc.
v. Peiffer, 21 F.3d 568, 571 (4th Cir. 1994)). The
Plaintiff has sufficiently alleged both ownership of the
copyrights at issue and encroachment. The Plaintiff has
specifically identified the motion picture the rights to
which Does 1-9 have allegedly infringed. [Doc. 1 at 1].
Plaintiff is the holder of a validly registered copyright in
that motion picture. [Doc. 1 at ¶¶ 6, 7; Ex. 1 to
Complaint, Doc. 1-1]. The “motion picture contains
wholly original material that is copyrightable subject matter
under the laws of the United States, ” and
“Defendants had notice of Plaintiff's rights
through general publication and advertising and more
specifically identified in the content of the motion picture,
advertising associated with the motion picture, and copies,
each of which bore a proper copyright notice.” [Doc. 1
at ¶¶ 8, 9]. “Defendants, without the
permission or consent of Plaintiff, copied and distributed
Plaintiff's motion picture through a public bittorrent
network, ” which “infringed Plaintiff's
exclusive rights under the Copyright Act.”
[Id. at ¶¶ 34, 35]. The Plaintiff has also
specified the date and time at which Does 1-9's allegedly
infringing activity occurred and the IP address assigned to
each unknown defendant at that time. [Ex. 2 to Complaint,
Doc. 1-2]. As such, the Plaintiff has made a concrete showing
of a prima facie claim of copyright infringement,
satisfying the first Sony factor.
the discovery request is sufficiently specific to establish a
reasonable likelihood that the identities of Does 1-9 can be
ascertained so that they can be properly served. See
Rotten Records, Inc. v. Doe, 108 F.Supp.3d 132, 134
(W.D.N.Y. 2015) (“Plaintiff has also met the
specificity requirement, insofar as Plaintiff seeks the name
and address of the individual assigned IP address [ ] for the
limited purpose of enabling Plaintiff to serve process on
the Plaintiff has shown that there are no alternative means
to obtain the information as to the identities of Does 1-9.
Plaintiff provides, “only ISPs maintain the records
that show the individual contact information for the
subscribers with the IP address.” [Doc. 5 at 4-5].
Further, ISPs are prohibited from disclosing this identifying
information without a court order. 47 U.S.C. § 551(c).
the Plaintiff has shown that the information it seeks to
subpoena is centrally needed to advance the Plaintiff's
copyright infringement claim. The Plaintiff simply cannot
identify the Doe Defendants and serve process on them without
the information sought.
consideration of the fifth factor in the Sony
analysis, the Doe Defendants' expectation of privacy,
also supports disclosure. Courts having examined this issue
have universally held an unknown defendant's
“expectation of privacy for sharing copyrighted
[materials] through an online file-sharing network are simply
insufficient to permit him to avoid having to defend against
a claim of copyright infringement.” Arista
Records, 604 F.3d at 124; see also, Virgin
Records America, Inc. v. Doe, No. 5:08-cv-389-D; 2009 WL
700207, at *3 (E.D. N.C. March 16, 2009) (Daniel, J.)
(“A defendant has little expectation of privacy in
allegedly distributing music over the internet without the
permission of the copyright holder”). As such, any
minimal expectation of privacy of Does 1-9 is insufficient
under the ...