Focus on music industry The end of John Doe copyright suits in the US? Barnes & Thornburg’s Felicia Boyd reports on US ISPs refusing to comply with court subpoenas demanding subscriber information in copyright cases F ile-sharing services continue to facilitate the illegal exchange of nearly every form of digital media, despite protracted litigation and numerous public relations campaigns. BitTorrent, the world’s most used file-sharing protocol, boasts over 150 million users worldwide1. After more than 30,000 lawsuits targeting users of file-sharing networks, the Recording Industry of America (RIAA) announced an end to its litigation campaign in 2008. In place of litigation, the RIAA began working with Internet Service Providers (ISPs) to police alleged law-breakers and stem the growth of infringing activity. But while the RIAA has stepped back from this litigation strategy, other groups have quickly filled the void. Entities such as the US Copyright Group and Righthaven LLC, along with numerous adult entertainment companies, have embraced the strategy of filing mass copyright infringement suits against anonymous “Doe defendants”. Adult entertainment companies have been particularly litigious, filing over 100 lawsuits against more than 15,000 defendants in the last year and a half alone. Mass “John Doe” suits are not a new phenomena. The RIAA utilised the same strategy throughout the 2000s with varying results. As with the RIAA suits, plaintiffs enter these cases without the necessary evidence to identify the various “John Does”. Most often, plaintiffs possess only a user’s IP address. Thus, plaintiffs must subpoena subscriber information from ISPs. Traditionally, ISPs, particularly smaller ISPs, turn over subscriber information. However, with the dramatic expansion of mass “John Doe” suits in the last few years, ISPs and courts have begun to resist discovery efforts. ISPs fight back In response to the onslaught of “John Doe” suits, judges across the country have increasingly chided this litigation strategy. In the Northern District of Illinois, chief judge 28 Intellectual Property magazine James Holderman noted a “stiffening judicial headwind” against this perceived “abuse of the legal system2”. In the Northern District of California, magistrate judge Howard Lloyd was more condemning. In an order denying leave to take expedited discovery, Lloyd suggested that courts “will not assist a plaintiff who seems to have no desire to actually litigate but instead seems to be using the courts to pursue an extrajudicial business plan against possible infringers3”. These sentiments mirror the concerns of several ISPs and consumer advocacy groups across the country. Amid this growing frustration, two of the country’s largest ISPs recently refused to comply with subpoenas seeking subscriber information. Verizon, e-Books, and the six-strikes solution Last autumn, John Wiley & Sons, publishers of the popular “For Dummies” book series, became the first publisher to pursue BitTorrent users in the United States. Until recently, Wiley encountered little resistance in court. In a federal action in the Southern District of New York, Wiley sought and received court permission to subpoena the identities of certain Verizon subscribers. For its part, Verizon objected to these subpoenas and refused to answer. Among other things, Verizon argued that the Doe defendants were improperly joined and that the subpoenas sought irrelevant information. Moreover, while Wiley only requested subscriber information for 10 users, Verizon suggested that the subpoenas sought merely “to harass, cause unnecessary delay, or needlessly increase the cost of litigation4”. Following a conference call with the judge regarding these issues, Wiley withdrew all subpoenas sent to Verizon. In conjunction with its stand in the Wiley & Sons litigation, Verizon’s participation in the “six strikes” system suggests that it may continue to resist efforts to obtain subscriber information. In 2011, Verizon, along with other major ISPs, reached a deal with the RIAA and the Motion Picture Association September 2012 of America (MPAA) to implement a system through which copyright infringers receive successive warnings regarding their conduct. After six warnings (or strikes), ISPs may implement a variety of repressive measures, including slowing or temporarily disconnecting offenders’ internet connections. In a recent interview, Verizon representatives stated their belief that this programme “offers the best approach to the problem of illegal file sharing, and importantly is one that respects the privacy and rights of our subscribers5”. Comcast and the ‘pornography swarm’ Initially, like many other ISPs, Comcast complied with subpoena requests in mass “John Doe” suits. Like Verizon, however, Comcast recently refused to comply with a subpoena request in one of the so-called ‘pornography swarm’ cases filed in the Northern District of Illinois. AF Holdings, a consortium of adult entertainment producers, sought information on 88 of Comcast’s subscribers. Instead of handing over requested subscriber information, Comcast moved to quash the subpoenas. Comcast offered a scathing account of AF Holdings’ joinder theory and its litigation tactics. Comcast argued that AF Holdings had no grounds to join the Doe defendants in one lawsuit, as “the alleged illegal activity of the different IP addresses occurred on different days and times”, negating AF Holding’s “single swarm” theory of joinder6. Furthermore, in a noteworthy rebuke of AF Holdings’ litigation strategy, Comcast accused the company of “unfair litigation tactics” and using Doe defendants’ “concern with being publicly charged with downloading pornographic films to wrest settlement from identified subscribers7”. During a subsequent status hearing on the issue, Judge Gary Feinerman quashed the subpoenas. Lessons learned: challenging ISP subpoenas As ISPs and courts increasingly resist mass “John Doe” suits, certain patterns have www.intellectualpropertymagazine.com emerged. Underlying this resistance are wellworn concerns regarding forum shopping and the avoidance of paying multiple court filing fees. Certainly, recent cases reveal a general aversion to the “Settlement-o-Matic” litigation scheme plaintiffs are often accused of employing. Still, the procedural challenges to court-ordered discovery of ISP subscriber information have met varying degrees of success, largely stemming from divergent judicial interpretation of BitTorrent technology and how users interact to share files. BitTorrent in a nutshell The BitTorrent protocol allows users to share files anonymously with other users. Instead of relying on a central server to distribute data directly to individual users, the BitTorrent protocol allows individual users to distribute data among themselves by exchanging pieces of the file with each other to eventually obtain a whole copy of the file. This process reduces the load on the source computer and allows devices to share larger computer files (such as digital copies of movies). In BitTorrent vernacular, individual downloaders of particular files are called “peers”. The group of peers involved in downloading a particular file are called a “swarm.” Personal jurisdiction challenges Plaintiffs filing mass “John Doe” suits assume that registered subscribers of a given IP address are, in fact, the individuals downloading infringing files. This is not always the case. As Judge Gary Brown noted in an order dismissing complaints against some 80 Doe defendants, “the assumption that the person who pays for internet access at a given location is the same individual who allegedly downloaded a single sexually explicit film is tenuous, and one that has grown more so over time8”.Commentators have suggested that the mere use of BitTorrent does not create personal jurisdiction in every district where a BitTorrent “peer” might be located, because those locations are unpredictable and normally invisible to the user9. infringement is, without more, insufficient for permissive joinder under Rule 20”11. Plaintiffs in mass “John Doe” suits often allege that each defendant who participated in a BitTorrent “swarm” for a single file acted in concert or conspired to commit copyright infringement. Thus, as the argument goes, all “swarm” participants may be properly joined to a single lawsuit. Several courts have found this reasoning unpersuasive. For instance, courts have noted that the BitTorrent protocol is fully automated and, therefore, various defendants have no personal contact with other members of a particular “swarm”12. Furthermore, the alleged infringement often occurs days apart, making it unlikely that defendants’ computers communicated with one another13. Still, some courts have allowed mass “John Doe” suits to proceed under the theory that each Doe defendant who participated in a BitTorrent “swarm” may be responsible for distributing copyrighted materials to any other Doe defendant14. Other courts have suggested that joinder issues should not be considered until individual defendants have been identified and named, thus allowing plaintiffs to proceed with discovery15. To minimise joinder and jurisdictional issues, some plaintiffs have opted to sue a single defendant attached to an IP address located in the district where the lawsuit is filed. In these single defendant suits, plaintiffs seek discovery of the IP addresses of nonparty computer users or “co-conspirators” who downloaded the same file through the BitTorrent system. Here too, however, courts confronting the issue have pointed to the nature of the BitTorrent protocol and suggested that plaintiffs must sue each IP address in the district where the address is located16. If these trends continue, we may see the end of mass John Doe suits against file-sharers. Courts have consistently shown distaste for the joinder of hundreds of “John Does” in mass copyright infringement suits. For instance, in the 2010 Axel Braun Productions v Does 1-7098 case,10 the District Court for the Northern District of West Virginia severed all but one defendant (of 7,098) in a file-sharing suit pertaining to the adult film “Batman XXX: A Porn Parody”. Magistrate judge John Preston Bailey, citing similar cases, explained that the “alleged use of some of the same ISPs and P2P networks to commit copyright Footnotes 1. BitTorrent and µTorrent Software Surpass 150 Million User Milestone; Announce New Consumer Electronics Partnerships, http:// w w w. re u t e r s . c o m / a r t i c l e / 2 0 1 2 / 0 1 / 0 9 / idUS162488+09-Jan-2012+ BW20120109. 2. Memorandum Opinion and Order, Pacific Century International, Ltd. v. Does 1-37, No. 1:12-cv-01057 (N.D. Ill. March 3, 2012), ECF No. 23 [Hereinafter Pacific Century Order]. 3.Order Denying Application for Leave to Take Expedited Discovery and Severing Does 2-90, Hard Drive Productions, Inc., v. Does 1-90, No. 5:11-cv-03825 (N.D. Cal. March 30, 2012), ECF No. 18. 4. See Endorsed Letter to Judge Katherine B. Forrest, John Wiley & Sons, Inc. v. John Does Nos. 1-37, No. 1:12-cv-01980 (S.D. N.Y. May 8, www.intellectualpropertymagazine.com September 2012 Improper joinder challenges 2012), ECF No. 7. 5. US ‘Six Strikes’ Anti-Piracy Scheme Delayed, TorrentFreak (May 18, 2012), http://torrentfreak. com/us-six-strikes-anti-piracy-schemedelayed-120518. 6.Memorandum in Opposition to Plaintiff’s Motion for Order to Show Cause, AF Holding, LLC v. Comcast Cable Communications, NO. 1:12cv-03516 (N.D. Ill. June 1, 2012), ECF No. 11 [hereinafter Comcast Memo] 7.Comcast Memo, supra note 9, at 12. 8. Order & Report & Recommendation, In re:BitTorrent Adult Film Copyright Infringement Cases, No. 2:11-cv-03995 (E.D. N.Y. May 1, 2012), ECF No. 39 [hereinafter BitTorrent Order]. 9.EFF Amici, supra note 6, at 10. 10. Order Severing Does 2-7098, Axel Braun Productions v. Does 1-7098, No. 3:10-cv00112 (N.D. W.Va. Dec. 23, 2010), ECF No. 6 [hereinafter Axel Braun Order]. 11. See Axel Braun Order, supra note 13, at 3. 12. BitTorrent Order, supra note 11. 13. BitTorrent Order, supra note 11. 14. See Memorandum Opinion and Order, First Time Videos, LLC, v. Does 1-500, No. 1:10-cv06254, ECF No. 151. 15. See Call of the Wild Movie, LLC, v. Does 1-171, 770 F. Supp. 2d 332, 341(D. D.C. 2011). 16. Pacific Century Order, supra note 4 at 11. Author Felicia Boyd is a partner with Barnes & Thornburg in the firm’s Minneapolis office, where she is a member of the Intellectual Property Department. Boyd focuses her practice on complex intellectual property litigation and has led plaintiff and defence litigation on a large variety of claims related to patents, copyrights, trademarks and trade dress. With special thanks to Barnes & Thornburg attorney William Manske for his research and assistance drafting the article. Intellectual Property magazine 29