11-cv-00245-ss docket 4 motion for leave to take discovery

1.

UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF TEXAS

AUSTIN DIVISION

IO GROUP, INC. d/b/a TITAN MEDIA,

a California corporation,

Plaintiff,

vs.

JOHN DOE , an individual,

Defendant.

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CIVIL ACTION NO.: 11-245-SS

MOTION FOR LEAVE TO TAKE DISCOVERY

PRIOR TO RULE 26 CONFERENCE

TO THE HONORABLE UNITED STATES DISTRICT JUDGE:

Plaintiff hereby moves the Court for leave to take discovery prior to the Rule 26

conference in order to identify the proper Defendant and subsequently amend the Complaint.

1. Plaintiff seeks leave to take limited discovery prior to the scheduled Rule 26

conference for the reasons set forth herein, and in the concurrently filed affidavit in support

of this motion. Plaintiff could not obtain stipulation for this motion because Plaintiff cannot

identify the Doe Defendant until the requested discovery takes place and therefore no

defendant has been named.

Case 1:11-cv-00245-SS Document 4 Filed 03/30/11 of 16

2.

I. INTRODUCTION AND FACTUAL BACKGROUND

2. Io Group, Inc. is a California corporation doing business as “Titan Media,” with its

principal place of business located at 69 Converse Street, San Francisco, California 94103.

Titan Media produces, markets, and distributes adult entertainment products, including

Internet website content, videos, DVDs, photographs, etc. Plaintiff operates and maintains a

website by and through which individuals who pay a monthly subscription fee can view its

photographic and audiovisual works. (Complaint at ¶5.)

3. Defendant DOE is an individual whose true name and address are unknown to

Plaintiff. (Id. at ¶6.) DOE distributed an unauthorized and infringing copy of Plaintiff’s

audiovisual work Campus Pizza by and through the eDonkey2000 peer-to-peer Network.

(Id., passim.)

4. Io Group, Inc. engaged Media Protector International GmbH (Media Protector

International) to locate and document infringing copies of its copyright protected works on

the P2P Network eDonkey2000. (Affidavit of D. Gill Sperlein at ¶2.) Media Protector

International identified the IP address from which the individual distributed the infringing

file and recorded the IP address and the exact time and date at which it witnessed the

infringing files. (Id. at ¶3.)

5. Plaintiff previously filed an action in the Northern District of California against

Defendant DOE and eighteen other Defendants who had similarly infringed Plaintiff’s

works. (Id. at ¶4.) Through Court authorized early discovery, Plaintiff identified the account

holder whose IP address was used to access the Internet and engage in the infringing activity.

(Id. at ¶¶ 4 and 5.) The account holder, identified by EarthLink as a resident of Austin,


3.

Texas, denies he is responsible for the infringing activity. (Id. at ¶¶ 4 and 5.) He claims that

someone resides in his home with him and had access to his Internet account. (Id. at ¶6.) He

also claims he made his wireless Internet connection available to his neighbors by failing to

password protect his network. (Id.) He refuses to provide information to help identify the

infringer, and refuses to allow a computer forensics expert to examine his computer. (Id.)

6. Plaintiff can only identify the actual infringer by way of further investigation.

Specifically, in order to determine to whom the Subscriber1 allowed access to his wireless

network, Plaintiff must depose him as a non-party witness and examine his computer and his

router. Plaintiff must also identify the individual living with the Subscriber and examine that

individual’s computer. Once Plaintiff has determined if the actual infringer is the Subscriber,

the individual with whom he lives, or a neighbor, Plaintiff will amend the Complaint to name

that individual and will proceed against him. Accordingly, Plaintiff seeks leave from the

Court to serve a Rule 45 third-party subpoena on Subscriber prior to the Rule 26 Case

Management Conference in this matter.

7. Federal law provides for the relief Plaintiff seeks.

II. ARGUMENT

Federal Rules Allow for Early Discovery

8. Federal Rules allow for discovery prior to a Rule 26 conference upon a showing of

good cause. See Semitool, Inc. v. Tokyo Electronic America, Inc., 208 F.R.D. 273, 275-76

(N.D. Cal. 2002).

1 The Subscriber has expressed concerns about being publicly identified. Thus, to protect his identiy, at this stage,

Plaintiff refers to him only as Subscriber. However, if Plaintiff determines that the Subscriber is the infringer,

Plaintiff will identify him by name in the Amended Complaint.


4.

9. More specifically, courts have recognized that, “[s]ervice of process can pose a

special dilemma for plaintiffs in cases like this in which the tortuous activity occurred

entirely on-line.” Columbia Ins. Co. v. Seescandy.com, 185 F.R.D. 573, 577 (N.D. Cal.

1999). Accordingly, courts have developed the following factors to consider when granting

motions for expedited discovery to identify anonymous Internet users: (1) whether the

plaintiff can identify the missing party with sufficient specificity such that the court can

determine that defendant is a real person or entity who could be sued in federal court; (2) all

previous steps taken by the plaintiff to identify the Doe defendant; and (3) whether the

plaintiff’s suit could withstand a motion to dismiss. Id. at 578-80. Each of these factors

resolves in favor of granting Plaintiff’s requested relief.

10. First, Plaintiff has sufficiently identified individuals who are real persons Plaintiff

could sue in Federal Court. Plaintiff’s investigator, Media Protector, observed and

documented infringement of its registered work by the individual identified as DOE in the

Complaint. (Sperlein Affidavit at ¶¶ 2 and 3.) The requested discovery is necessary for

Plaintiff to determine the true name and address of the individual who performed the

infringing acts. (Id. at ¶10.)

11. Second, there are no other practical measures Plaintiff could take to identify the DOE

Defendant. (Id.) Plaintiff is aware of no available information that would identify the

infringing user, other than information available from the non-party subscriber. Due to the

nature of on-line transactions, Plaintiff has no way of determining Defendant’s identity

except through a third-party subpoena. (Id.)


5.

12. Third, Plaintiff has asserted a prima facia claim for copyright infringement in its

Complaint that can withstand a motion to dismiss. Specifically, Plaintiff has alleged that a) it

owns and has registered the copyright in the work at issue; and b) the Defendant made

unauthorized reproductions of the work and distributed it without Plaintiff’s authorization.

These allegations state a claim for copyright infringement. 17 U.S.C. § 106(1)(3).

13. When outlining the above factors, the court in Columbia noted that in cases where

injured parties are likely to find themselves chasing unidentified tortfeasors from ISP to ISP,

the traditional enforcement of strict compliance with service requirements should be

tempered by the need to provide injured parties with a forum in which they may seek redress

for grievances. Columbia, 185 F.R.D. at 579. An analysis of the factors clearly demonstrates

Plaintiff’s legitimate interest in identifying the name and address of the individual who

infringed upon its copyrighted work.

Explanation of Specific Requests

14. In addition to the three factors discussed above, courts have indicated that a plaintiff

requesting early discovery to identify defendants should justify specific requests and explain

how such requests “will lead to identifying information about defendant that would make

service of process possible.” See Columbia 185 F.R.D. at 580; Gillespie v. Civiletti, 629 F.

2d 637, 642 (9th Cir.1980).

15. The infringement at issue in this action occurred through a distribution method

commonly referred to as Peer-to-Peer (P2P). Users download software to their computers

that allows them to locate and transfer files to and from other users. In order to use the

software to locate and exchange files, a user must connect to the Internet.


6.

16. Individuals gain access to the Internet through an Internet service provider (ISP).

When an ISP such as EarthLink, Inc. provides Internet access to a subscriber, it does so

through a modem located at the subscriber’s home or office. (Sperlein Affidavit at ¶7.)

Each time the subscriber accesses the Internet, EarthLink provides a unique number to the

subscriber called an Internet protocol (IP) address. This is somewhat akin to a telephone

number. (Id.) The IP address for a subscriber may stay the same (a static IP address) or it

may change from time to time (a dynamic IP address). (Id.) ISPs generally record the times

and dates it assigns each IP address to a subscriber. (Id.)

17. P2P technology used to locate and exchange files relies on the ability to identify the

computers to and from which users search and exchange files. The technology identifies

those computers through the IP address from which the computer connects to the Internet. In

this manner, Media Protector International identified the IP addresses from which individual

connected to the Internet for the purpose of distributing unauthorized copies of Plaintiff’s

work to others by and through P2P technology. (Id. at ¶3.) Media Protector International

recorded the exact date and time an individual used the IP address to access the Internet to

make the files available. (Id.) At the time and date in question, EarthLink had assigned the

IP address to the subscriber Plaintiff now seeks to question.

18. In some cases, identifying the subscriber assigned the IP address might provide the

information necessary to identify the defendant infringer. However, here the Subscriber

claims he is not the infringer, but rather that he provided access to his Internet account to the

actual infringer. Plaintiff seeks to determine the veracity of the Subscriber’s claims and to

question the Subscriber in order to determine to whom he provided access. At least on


7.

District Court has allowed a copyright holder plaintiff to take such follow-up discovery after

initially identifying the Subscriber. Liberty Media Holdings, LLC v. Doe, 2011 U.S. Dist.

LEXIS 23046 (S.D. Cal. Mar. 8, 2011).

19. Specifically, Plaintiff seeks to serve a third party subpoena in order to 1) examine the

computer of the Subscriber, as well as the computers of the other residents of his household

in order to determine if those computers currently or at sometime in the past contained the

software necessary to communicate with the eDonkey Network; and 2) to question the

Subscriber as to whom he allowed access to his Internet connection at the time and date of

the infringing activity. This information will allow Plaintiff to pinpoint who actually

accessed the Subscriber’s Internet connection to infringe Plaintiff’s works. Once Plaintiff

has this information it will amend its Complaint to name the proper defendant.

III. CONCLUSION

20. For the forgoing reasons, Plaintiff respectfully requests that the Court grant Plaintiff’s

request to serve a non-party subpoena on the individual previously identified by EarthLink as

the Subscriber whose account was used to access the Internet for the purpose of reproducing

and distributing its copyright registered movie.

Dated: March 28, 2011 Respectfully submitted,

/s/ D. Gill Sperlein

______________________________

D. GILL SPERLEIN (CA Bar 172887),

pro hac vice pending

THE LAW OFFICE OF D. GILL SPERLEIN

[email protected]

584 Castro Street, Suite 879

San Francisco, CA 94114

Tel: 415-404-6615

Fax: 415-404-6616


mailto:[email protected]

8.

/s/James O. Deegear III

DEEGEAR & MATTHEWS, PLLC

Texas Bar No. 05713500

[email protected]

5945 Broadway

San Antonio, TX 78209

Tel: 210-930-5557

Fax: 210-930-3607


mailto:[email protected]

11-cv-00245-ss docket 4 motion for leave to take discovery

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