sdny-15-cv-02604-doc-23

Case 7:15-cv-02604-KMK Document 23 Filed 10/09/15 Page 1 of 8
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
____________________________________
)
MALIBU MEDIA, LLC, )
)
Plaintiff, ) No. 7:15-cv-02604-KMK
v. )
)
John Doe subscriber assigned IP address )
24.189.135.238, )
)
Defendant. )
____________________________________ )
REPLY TO PLAINTIFF’S OPPOSITION TO MOTION TO QUASH
ARGUMENT
I. Malibu Media Addresses the Wrong Legal Standard.
Malibu Media’s focus on Rule 45 as the proper standard in its opposition to Defendant’s
motion to quash is myopic. The subpoena was requested for by Malibu Media (and issued) pursuant
to the good cause standard established under Rule 26. See, Doc. 5 p. 1 (“Plaintiff respectfully request
permission to file a motion Pursuant to Fed.R.Civ.P. 26(d)(1), seeking leave to serve a third party
subpoena prior to a rule 26(f) conference to learn the Defendant’s identity.”); Doc. 7 (same); Doc. 8
p. 7 (“Rule 26(b) provides courts with the authority to issue such an order: ‘[f]or good cause, the
court may order discovery of any matter relevant to the subject matter involved in the action.’”).
Therefore, any analysis as to whether good cause existed for the subpoena to have been issued to
begin with, must be done so under Rule 26.
Because the arguments advanced in the Doe Defendant’s Motion to Quash raise
serious questions as to whether good cause exists in these actions to permit the
expedited pre-answer discovery provided for in the Court’s September 4, 2015 Order,
the relief and directives provided for in that Order are stayed pending resolution of
the Doe Defendant’s Motion to Quash. See Gambale v. Deutsche Bank AG, 277 F.3d
133, 141 (2d Cir. 2004) (“It is undisputed that a district court retains the power to
modify or lift protective orders that it has entered.”).
In Re Malibu Media Adult Film Copyright Infringement Cases, No. 15-cv-04797, CM/ECF 10 p. 3
(E.D.N.Y October 6, 2015) (staying pre-conference subpoenas in 88 cases). See also, Doc. 17 pp.
1-2.
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II.
Defendant has Rebutted Malibu Media’s Prima Facie Case of Infringement.
To succeed on a claim of copyright infringement, a plaintiff must show (1) “ownership of a
valid copyright” and (2) “copying of the protectable elements of the copyrighted work.” Jackson v.
Odenat, 9 F.Supp.3d 342, 351 (S.D.N.Y. 2014) (citing Scholz Design, Inc. v. Sard Custom Homes,
LLC, 691 F.3d 182, 186 (2d Cir. 2012)).
In its pleadings, Malibu Media relies solely on the presumption of validity that attaches to a
certificate of copyright registration. 1 See Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir. 1997)
(“A certificate of copyright registration is prima facie evidence that the copyright is valid.”).
Nonetheless, such a prima facie presumption is rebuttable. Id. See also Durham Indus., Inc. v. Tomy
Corp., 630 F.2d 905, 908 (2d Cir. 1980); Tradescape.com v. Shivaram, 77 F.Supp.2d 408, 414
(S.D.N.Y. 1999); Family Dollar Stores, Inc. v. United Fabrics Int’l, Inc., 896 F.Supp.2d 223, 229
(S.D.N.Y. 2012).
Even if we assume that the Defendant is the infringer, 2 Malibu Media’s Complaint is
insufficient as to the second element of infringement.
First, to demonstrate unauthorized copying, Malibu Media must be able show that its work
was actually copied; second, it must establish substantial similarity … i.e., (i) that it was protected
expression in the work that was copied and (ii) that the amount that was copied is “more than de
minimis.” Tufenkian Imp./Exp. Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 131 (2d Cir.
2003) (internal quotation marks and citation omitted).
Copying is de minimus if an infringer copies protected material “to such a trivial extent as to
fall below the quantitative threshold of substantial similarity[.]” Ringgold v. Black Entm’t Television,
Inc., 126 F.3d 70, 74 (2d Cir. 1997). To determine whether the quantity of unauthorized copying is de
minimus, “courts often look to the amount of the copyrighted work that was copied, as well as (in
1
Cf. Doc. 20 p. 5. (“Courts consistently hold that Malibu Media has established a prima facie case of copyright
infringement in BitTorrent litigation cases.”) with Malibu Media, LLC v. John Doe Subscriber assigned IP Address
66108.67.10, No. 15-cv-04369, 2015 U.S. Dist. LEXIS 87751, *13 (S.D.N.Y. July 2015) (Wherein, Judge
Hellerstein denied leave to serve a subpoena because Malibu failed in establishing a prima facie claim of
infringement.).
2
Malibu Media makes the seemingly off-hand allegation that it observed Defendant’s IP address distributing “thirdparty
works on BitTorrent from April 9, 2014 until August 19, 2015”. Doc. 20 p. 4. Malibu Media presumably did
not attach this document to its complaint because its lawyers have been sanctioned for the same. Malibu Media v.
John Doe 66.108.67.10, No. 15-cv-04369, 2015 U.S. Dist. LEXIS 87751, *11 (S.D.N.Y. July 6, 2015). And even if
relevant, it only indicates that the Defendant used the Internet connection he pays for.
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cases involving visual works) the observability of the copyrighted work in the allegedly infringing
work.” Sandoval v. New Line Cinema Corp., 147 F.3d 215, 217 (2d Cir. 1998).
The piece of the file Defendant allegedly downloaded is between 241-482 milliseconds of an
83.35GB file containing 127 films. See Doc. 17 pp. 2-3. Malibu Media’s opposition does not dispute
this contention. Malibu Media’s films average in length between 10-15 minutes. Thus, Defendant is
being accused of downloading at the most 482 milliseconds of no less than 21 hours of film, or
approximately .0006375% of the total time. Such an infinitesimal portion can be said to contain any
substantive content. See e.g. Malibu Media, LLC v. Doe, 82 F.Supp.3d 650, 658 (E.D. Pa. 2015)
(“Here we determine as a matter of law that there was no improper appropriation because no
reasonable jury, properly instructed, could find that the data snippet bears a “substantial similarity” to
Malibu Media’s copyrighted work. We conclude that, even if Doe copied the preview, his copying
would not be an improper appropriation violating Malibu Media’s copyright of the entire film.”)
Measured against this standard, Malibu Media’s Complaint does not establish de minimis
infringement for a single film let alone all 127. See Doc. 17 pp. 2-3.
More so, Malibu Media makes no showing as to whether the copied part of the file was even
protected. It is just as plausible that the allegedly infringing content was a blank screen or an FBI
warning.
Without reciting any facts from which a reasonable and plausible inference can be drawn that
the Defendant, as opposed to someone else, infringed or that the content in question was ever
infringed or even protected, Malibu Media “has alleged but it has not shown that [it] is entitled to
relief.” Ashcroft v. Iqbal, 129 S. Ct. 1937, 1950 (2009). See also Technomarine SA v. Jacob Time,
Inc., No. 12-cv-0790, 2012 U.S. Dist. LEXIS 90261, *16 (S.D.N.Y. June 22, 2012); Atlantic
Recording Corp. v. Brennan, 534 F.Supp.2d 278, 281-282 (D. Conn. 2008).
III.
Malibu Media Has Not Met Its Burden for Showing There is No Other Way to Identify
the Defendant.
Malibu Media’s memorandum of law on this point repeats, verbatim at times, the arguments
twice made and twice denied by a court of this District just months ago. Malibu Media v. Doe
207.38.208.137, No. 15-cv-01883, CM/ECF 20 (S.D.N.Y. June 5, 2015)
The Court finds that the plaintiff failed to submit any evidence in support of its
contention that “[t]here is no other means available to Plaintiff to obtain the
information sought from the ISP other than by the requested third party subpoena.”
The Court finds further that the instant motion did not cure the lack of evidence
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Id., p. 7.
supporting the plaintiff’s arguments, which was one of the two grounds on which the
Court relied when it denied the previous motion, on April 10, 2015.
Malibu Media’s continuing failure to cure these faults, supports Defendant’s motion to quash.
IV.
Malibu Media Has Chosen to Litigate Against an Unknown Party.
No one has forced Malibu Media to litigate against an unknown party, it has chosen to do so
of its own free will.
As Malibu Media is aware, it is well established that an IP address alone identifies only a
subscriber, not an infringer. BKGTH Prods. LLC v. Doe, No. 13-cv-5310, 2013 U.S. Dist. LEXIS
140924, *22 (E.D. La. Sept. 30, 2013) (“This exact issue has been used to support denials of
expedited discovery requests in similar copyright infringement cases across the country.”).
[T]hese already legitimate concerns are exacerbated by the growingly unrealistic
expectation that the registered subscriber of an IP address is the same person alleged
to have engaged in the allegedly infringing conduct.
In re Malibu Media Adult Film Copyright Infringement Cases, 2015 U.S. Dist. LEXIS 74125, *9-11
(E.D.N.Y. June 8, 2015). See also John Wiley & Sons, Inc. v. Doe, 2013 U.S. Dist. LEXIS 36359, *8
(S.D.N.Y. Mar. 15, 2013) (“identifying defendants solely by IP addresses, … leads to innumerable
false-positives”); Malibu Media, LLC v. Doe, No. 13-cv-536; No. 13-cv-544; No. 13-cv-779, 2013
U.S. Dist. LEXIS 176701, *7-12 (E.D. Wis. Dec. 12, 2013) (“An IP address identifies, at most, an
internet subscription that can be used by multiple people.”); Malibu Media LLC v. John Does 1-10,
No. 12-cv-01642, slip op. at 4 (C.D. Cal. Oct. 10, 2012) (“An IP address alone may yield subscriber
information, but that may only lead to the person paying for the Internet service and not necessarily
the actual infringer.”); Malibu Media, LLC v. Reynolds, No. 12-cv-6672, 2013 U.S. Dist. LEXIS
31228, *48 (N.D. Ill. Mar. 7, 2013) (“Wholesale litigation of these claims is inappropriate, at least
with respect to a vast majority (if not all) of Defendants.”); Malibu Media v. Doe, No. 14-cv-20213,
CM/ECF No. 10 (S.D. Fla. March 20, 2014) (“Even if this IP address is located within a residence,
the geolocation software cannot identify who has access to that residence’s computer and who would
actually be using it to infringe Plaintiff’s copyright. The Court finds that Plaintiff has not established
good cause[.]”)
The Court questions whether these allegations are sufficient to allege copyright
infringement stemming from the use of peer-to-peer file sharing systems where the
Defendant-corporation is connected to the infringement solely based on its IP
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address. It may be possible that Defendant is the alleged infringer that subscribed to
this IP address, but plausibility is still the touchstone of Iqbal and Twombly.
Malibu Media, LLC v. Tsanko, No. 12-cv-3899, 2013 U.S. Dist. LEXIS 169186, *10 (D.N.J. Nov. 30,
2013).
Here, Malibu Media sought leave to take “limited, immediate discovery.” Doc. 8 p. 3. In
doing so, it represented: “Plaintiff is suing [the] Defendant.” Id. There can be no dispute that Malibu
Media told the Court that with the results of the subpoena in hand it would be able to “identify” the
Defendant and serve process—despite lengthy precedent proving otherwise.
In keeping with that precedent, Malibu Media now makes the rhetorical shift that the
subpoena results are in fact insufficient to “identify” the Defendant of violating its copyrights. 3
Doc. 20 p. 13.
Without knowing Defendant’s identity, Plaintiff will not be able to examine its
evidence and determine if it is proceeding against the correct party, or evaluate any of
Defendant’s defenses. Plaintiff would be forced to proceed without the absolute most
critical information necessary.
Expedited discovery, therefore, is merely the beginning of an extensive and highly intrusive
discovery odyssey for the Defendant.
In other words, Plaintiff must go beyond the “limited discovery” that it earlier
asserted would lead to Defendants’ identities. (See Pl.'s Mot. 1; Pl.'s First Mot. 1)
Plaintiff is noticeably vague about what additional discovery it would need. But as
noted by Judge Grewal in a similar case prosecuted by Plaintiff's counsel (but not
cited in his motion), this approach may lead to copious amounts of additional
discovery to ferret out the alleged infringers. See Boy Racer, Inc. v. Does 1-52, No.
C-11-2329-PSG, at *4, 2011 U.S. Dist. LEXIS 103550 (stating that in proposed
discovery expedition to uncover doe defendants’ identities, “[p]resumably, every
desktop, laptop, smartphone, and tablet in the subscriber's residence, and perhaps any
residence of any neighbor, houseguest or other sharing his internet access, would be
fair game. Beyond such an inspection, [the plaintiff] might require still more
discovery, including interrogatories, document requests and even depositions.”) (N.D.
Cal. Sept. 13, 2011) (order denying further discovery in similar case) (footnote
omitted). Given this new information, the court finds that Plaintiff has not shown
good cause to obtain leave to take expedited discovery. The burdens of the
potentially expansive and intrusive discovery that Plaintiff may need to
propound to obtain Defendants’ identities likely would outweigh Plaintiff's need
for the information. Am. Legalnet, Inc., 673 F. Supp. 2d at 1066; Semitool, Inc., 208
F.R.D. at 276. In addition, the court shares the concern that these cases potentially
3
In re BitTorrent Adult Film Copyright Infringement Cases, 296 F.R.D. 80, 85 (E.D.N.Y. 2012) (“In sum, although
the complaints state that IP addresses are assigned to "devices" and thus by discovering the individual associated
with that IP address will reveal "defendants' true identity," this is unlikely to be the case. Most, if not all, of the IP
addresses will actually reflect a wireless router or other networking device, meaning that while the ISPs will provide
the name of its subscriber, the alleged infringer could be the subscriber, a member of his or her family, an employee,
invitee, neighbor or interloper.”).
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open the door to abusive settlement tactics. See On the Cheap, LLC v. Does 1-5011,
No. 10-4472-BZ, 2011 U.S. Dist. LEXIS 99831, 2011 WL 4018258, at *3 & n.6, 4
(N.D. Cal. Sept. 6, 2011) Nothing currently prevents Plaintiff from sending a
settlement demand to the individual that the ISP identifies as the IP subscriber. That
individual “whether guilty of copyright infringement or not” would then have to
decide whether to pay money to retain legal assistance, or pay the money demanded.
This creates great potential for a coercive and unjust “settlement.”
Pac. Century Int’l, Ltd. v. Does 1-101, 2011 U.S. Dist. LEXIS 124518, *7-9 (N.D. Cal. Oct. 27,
2011) (emphasis added).
Again, no one has forced Malibu Media to litigate against an unknown party. Rather, Malibu
Media admittedly lacks knowledge of the correct identity of the proper party to begin with.
Defendant, herein, was sued not on the basis of his allegedly infringing activity, but due to his status
as subscriber of the IP address utilized.
V. None of Malibu Media’s 4,902 Cases Have Ever Proceeded to Trial.
Malibu Media claims “a proven track record of litigating and prevailing in its cases.” Doc. 20
p. 15. In support, it cites a laundry list of cases that are either unresolved, settled or were voluntarily
dismissed. In particular, Malibu Media claims to have “won the first ever BitTorrent copyright
infringement lawsuit to reach trial.” In keeping with its tradition, Malibu Media overstates the
significance of what has been panned as little more than a show trial. In fact, the trial came to be
precisely because the court therein found Malibu Media’s conduct indicated a lack of intent to litigate
its claims or to proceed to to trial.
[I]t appears that Plaintiff has served the subpoenas allowed by this Court on the ISPs,
and has received information enabling Plaintiff to serve the Complaints on certain
John Does. However, the record does not show that Plaintiff has, in fact, served a
Complaint on any John Doe.
Malibu Media, LLC v. John Does 1, 6, 13, 14 and White, 902 F. Supp. 2d 690, 693 (E.D. Pa. 2012);
id. at 695-696 (“Plaintiff’s counsel candidly advised the Court that the Plaintiff's strategy is, after
initiating the lawsuits, to seek leave to serve third-party subpoenas on the ISPs to obtain
identification information for the IP addresses specified in Exhibit A to the Complaints. … In this
fashion, Plaintiff has initiated hundreds of lawsuits in various district courts throughout the country,
but has not yet proceeded to trial in any case.”).
In the course of pre-trial procedures, two of the defendants in White settled, leaving three
defendants for trial. Prior to the June hearing, Malibu Media informed the court 1) it had settled with
two of the remaining defendants but wanted a “final judgment” to enter against them; and 2) Bryan
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White, the third defendant, had reached a high/low agreement with Malibu and wouldn’t be paying
the whole damages amount, regardless of how the court ruled.2 White, No. 12-cv-2088, ECF Nos.
100, 101 & 102 (E.D. Pa. June 17, 2013). See also Exhibit A (Transcript of June 18, 2013 hearing).
Lastly, the only party to actually put on witnesses was Malibu Media, but there was no cross
examination, no testing of their evidence or methods.
In sum, all of the defendants stipulated to liability and the amount of damages due before the
hearing. There was nothing at issue during the one-day bench trial—neither liability, nor sufficiency
of the evidence, nor damages.
“A single trial almost two years ago against three defendants, all of whom admitted to
liability and two of whom settled as to damages prior to trial, is of little relevance to
the present inquiry.”
Malibu Media v. Ramsey, No. 14-cv-00718-TSB, CM/ECF No. 15 p. 17 n.12 (S.D. Ohio May 26,
2015).
claims at trial.
If anything, Malibu Media has “a proven track record” of avoiding discovery and litigating
Malibu’s corporate strategy relies on aggressively suing for infringement and
obtaining accelerated discovery of the IP address holder’s identity from the ISP. It
then seeks quick, out-of-court settlements which, because they are hidden, raise
serious questions about misuse of court procedure.
Malibu Media v. John Doe 66.108.67.10, No. 15-cv-04369, 2015 U.S. Dist. LEXIS 87751, *10
(S.D.N.Y. July 6, 2015). “In fact, most cases are voluntarily dismissed by Malibu Media pursuant to
Rule 41(a)(1)(A)(i) without obtaining a summons, but presumably after Malibu Media has used the
third-party subpoena to obtain a settlement.” Malibu Media v. Ramsey, No. 14-cv-00718, CM/ECF
15 p. 5 (S.D. Ohio May 26, 2015). “In the more than 60 Malibu Media cases before this Court,
Malibu Media has not shown any indication that it intends to prosecute the merits of its copyright
infringement claims.” See e.g. Malibu Media v. Downs, No. 14-cv-00707, CM/ECF 17 p. 17 (S.D.
Ohio May 26, 2015).
CONCLUSION
Malibu Media’s Complaint is premised upon conjecture and requires the kind of speculation
that the Supreme Court has prohibited. Read in its entirety, the Complaint is a patchwork of guesses
and contradictions. Thus, plaintiff has failed to adequately allege an actionable claim. Defendant
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should not be forced to engage in wasteful, expensive, and protracted motion practice rather than be
shamed into settling a case Malibu Media can neither prove nor intends to.
Dated: October 9, 2015
Respectfully,
By: /s/ Jason E. Sweet
____________________
Jason E. Sweet
BOOTH SWEET LLP
32R Essex Street, Suite 1
Cambridge, MA 02139
Telephone: (617) 250-8602
Facsimile: (617) 250-8883
jsweet@boothsweet.com
Pro Hac Vice Appearance for the Defendant
CERTIFICATE OF SERVICE
I hereby certify that on October 9 th 2015, I electronically filed the foregoing document with
the Clerk of the Court using CM/ECF and that service was perfected on all counsel of record and
interested parties through this system.
By: /s/ Jason E. Sweet
___________________
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