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UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
MILLENNIUM TGA, INC.,
) Case No.: 1:12-mc-00150-ESH-AK
) Judge : Hon. Ellen S. Huvelle
) Magistrate Judge: Hon. Alan Kay
[Case pending in the U.S. District Court
for the Southern District of Texas,
) No. 4:11-cv-4501]
PLAINTIFF’S RESPONSE TO COMCAST CABLE COMMUNICATIONS, LLC’S
OBJECTIONS TO MAGISTRATE JUDGE’S RULING
Non-Party Comcast Cable Communications, LLC (“Respondent”) filed an objection to
the order issued by the Honorable Magistrate Judge Alan Kay on April 18, 2012, granting
Plaintiff Millennium TGA, Inc.’s (“Petitioner”) motion to compel Respondent’s compliance with
subpoena. (ECF No. 16.) The Court should deny Respondent’s objections and uphold the
Magistrate Judge’s order for the reasons described herein.
On December 20, 2011, Petitioner filed a lawsuit in the United States District Court for
the Southern District of Texas against a single John Doe defendant. Millennium TGA, Inc. v.
John Doe, No. 11-4501 (S.D. Tex. Dec. 20, 2011), ECF No. 1. Petitioner used the pseudonym
“John Doe” because it does not know the defendant’s actual identity. Instead, Petitioner knows
the IP address that John Doe was using while infringing on its copyrighted works. John Doe was
pinpointed by Petitioner’s agents as a serial infringer of Petitioner’s copyrighted works.
Petitioner’s agents also identified several individuals whose infringing activities were
materially aided by John Doe’s distribution of Petitioner’s copyrighted work to them via a file
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transfer protocol referred to as BitTorrent. Id. As with John Doe, Petitioner only knows these
individuals by their IP addresses. Id., ECF No. 1-2. Petitioner applied for and received leave
from the court in the underlying action to serve narrowly-tailored subscriber identification
subpoenas on the ISPs who provide Internet service to John Doe and his joint tortfeasors. Id.,
ECF Nos. 2, 6. Petitioner seeks damages against John Doe and any later-named parties on a joint
and several basis for the harm caused by the infringing activities described in Petitioner’s
complaint. Id., ECF No. 1. In order to prove contributory infringement, Petitioner will need to
prove a direct infringement by each of John Doe’s joint tortfeasors. Further, Petitioner will need
to establish the damages caused by John Doe and his joint tortfeasors. For these reasons, the
identifying information of John Does’ joint tortfeasors is essential to Petitioner’s fight against the
rampant infringement of its works.
Respondent’s objection to Magistrate Judge Alan Kay’s April 18, 2012 order should be
denied. Part A states the standard of review for Respondent’s objections. Part B argues that
Magistrate Judge Kay did not err in finding that Respondent’s personal jurisdiction arguments
were not at issue at this stage of the proceedings. Part C argues that Magistrate Judge Kay did
not err in finding Respondent’s misjoinder arguments were not at issue at this stage of the
proceedings. Part D argues that the Magistrate Judge did not err by declining to reassign this
matter to the Honorable Judge Robert Wilkins.
A. Standard of Review
This action was previously referred to the Magistrate Judge pursuant to Federal and Local
Rules, which permit a magistrate judge to decide certain non-dispositive matters. 28 U.S.C. §
636(b)(1)(A); Fed. R. Civ. P. 72(a); Local Rule 72.2. Pursuant to the rules, this Court will uphold
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a magistrate judge decision unless it was “clearly erroneous or contrary to law.” 28 U.S.C. §
636(b)(1)(A); Fed. R. Civ. P. 72(a); Local Rule 72.2(c); see also Graham v. Mukasey, 608
F.Supp.2d 50, 52 (D.D.C. 2009) (“A magistrate judge’s decision is entitled to great deference
unless it is clearly erroneous or contrary to law, ‘that is, if on the entire evidence the court is left
with the definite and firm conviction that a mistake has been committed.’”) (quoting Donohoe v.
Bonneville, 602 F.Supp.2d 1, 2 (D.D.C.2009)).
B. Magistrate Judge Kay did Not Err in Finding Respondent’s Personal Jurisdiction
Arguments are Not at Issue at this Stage of the Proceedings
Respondent argues that the Magistrate “Judge erred by failing to consider the personal
jurisdiction defenses raised by [Respondent] on behalf of its subscribers.” (ECF No. 16 at 5.) As
a non-party subpoena recipient, however, Respondent lacks standing to raise personal
jurisdiction defenses on behalf of its subscribers. Respondent only has standing to move to quash
or modify Plaintiff’s subpoena. See Fed. R. Civ. P. 45(c); (see also ECF No. 15 at 4-5) (“The
Court notes that these defenses (lack of jurisdiction, improper joinder) are not at issue at this
stage of the proceedings nor is it appropriate for Comcast, a nonparty, to raise such these
defenses on behalf of its subscribers.”) (emphasis added). Personal jurisdiction is a defense that
can only be raised (or waived) by an individual defendant. Caribbean Broadcasting System v.
Cable & Wireless, 148 F.3d 1080, 1090 (D.C. Cir. 1998) (“lack of personal jurisdiction is an
affirmative defense and so must be raised by the defendant”). Respondent’s attempt to usurp the
litigation prerogative of its subscribers is a gross due process violation. The Magistrate Judge
correctly ruled that Respondent’s attempt to raise waivable defenses on behalf of their
subscribers was inappropriate.
Further, Respondent’s personal jurisdiction arguments are premature as Petitioner is not
required to establish, plead, or even mention personal jurisdiction at this early stage of the
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litigation. Id. (“To be sure, [the plaintiff] had no obligation to make specific allegations relevant
to personal jurisdiction in its complaint . . . [Plaintiff’s] obligation to make some allegations
relating to personal jurisdiction arose, therefore, only after [the defendant] had filed its motion to
dismiss and supporting affidavit.”) The authority cited by Respondent for the opposite
proposition (ECF No. 16 at 6) is not applicable here. In that case, the plaintiff was pursuing a
default judgment against the defendant. System Pipe & Supply, Inc. v. M/V VIKTOR
KURNTOVSKIY, 242 F.3d 322 (5th Cir. 2001). At the default judgment stage, a district court
“has an affirmative duty” to determine whether it has jurisdiction over the “the subject matter
and the parties.” Id., 242 F.3d at 324. Otherwise, a district court errs by engaging in a sua sponte
personal jurisdiction inquiry. See Caribbean Broadcasting System, 148 F.3d at 1090.
It bears mentioning that the merits of Respondent’s personal jurisdiction arguments are
demonstrably erroneous. Respondent argues that “[t]he vast majority of the subscribers whose
personal information is sought in the Subpoena are not even subject to either this Court’s or the
underlying court’s jurisdiction.” (ECF No. 16 at 5.) Respondent appears to fundamentally
misunderstand the nature of the underlying action. Petitioner brought the underlying action
against a single defendant. Millennium TGA, Inc. v. John Doe, No. 11-4501 (S.D. Tex. Dec. 20,
2011), ECF No. 1. A personal jurisdiction analysis is only relevant with respect to that lone
defendant. International Shoe Co. v. Washington, 326 U.S. 310, 316 (1945). Respondent’s
arguments regarding whether or not the underlying court has personal jurisdiction over “the vast
majority of the subscribers,” therefore, has no relevance to whether or not personal jurisdiction
will be proper once the lone defendant is named and served. Respondent does not dispute the
underlying court’s jurisdiction over John Doe. (See generally ECF No. 16.)
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The case authority cited to by Respondent does not demonstrate that Magistrate Judge
Kay was “clearly erroneous or contrary to law” in his decision. It only demonstrates that other
courts have come to different conclusions when presented with cases involving different
procedural contexts, different pleadings, different facts, different parties, and different counsel.
For example, Respondent argues that “Magistrate Judge Kay conspicuously ignores the recent
decision by Judge Wilkins” in Nu Image, Inc. v. Does 1-23,322 799 F.Supp.2d 34 (D.D.C. 2011).
(ECF No. 16 at 2.) The Nu Image decision, however, involved an order to show cause as to why
venue and joinder of 23,322 putative defendants was proper. Id. at 36. None of these factors are
present here—this case involves a motion to compel where an Internet service provider has
challenged the court’s jurisdiction over non-party subscribers in a case brought against a single
defendant who both sides agree is located in the underlying court’s jurisdiction. Magistrate Judge
Kay did not “conspicuously ignore” the Nu Image decision, as the Respondents suggest, but
instead presumably found it to be inapplicable to the facts and circumstances of the present
action. Respondent cites to no authority that established clear error or contrary law in regards to
the order that requires the Court to overturn the Magistrate Judge’s decision.
C. Magistrate Judge Kay did Not Err in Finding Respondent’s Misjoinder Arguments
were Not at Issue at this Stage of the Proceedings
Respondent argues that Magistrate Judge Kay “erred by failing to address the misjoinder
of the Doe defendant and alleged co-conspirators.” (ECF No. 16 at 11.) The Court did expressly
address misjoinder, however, and found that it was improper for Respondent to raise this defense
on behalf of its subscribers. (ECF No. 15 at 4-5) (“The Court notes that these defenses (lack of
jurisdiction, improper joinder) are not at issue at this stage of the proceedings nor is it
appropriate for Comcast, a nonparty, to raise such these defenses on behalf of its subscribers.”)
(emphasis added). Further, Respondent’s misjoinder arguments are rather peculiar, given that
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Petitioner brought the underlying action against a single defendant. Millennium TGA, Inc. v.
John Doe, No. 11-4501 (S.D. Tex. Dec. 20, 2011), ECF No. 1. It is axiomatic to say that a single
defendant cannot be misjoined with himself. Every case cited by Respondent in support of its
misjoinder argument involves an action brought against multiple defendants. (ECF No. 16 at 11-
16.) Petitioner is not aware of, and Respondents do not cite to, a single case for the proposition
that a single defendant can be improperly joined in a case. (See generally ECF No. 16.)
Even if the underlying action had been brought against multiple defendants, Respondent
recognizes that courts in this jurisdiction have held that it is premature at the pleading stage of
litigation to consider misjoinder arguments. (ECF No. 16 at 14) (citing Call of the Wild Movie,
LLC v. Does 1–1062, 770 F.Supp.2d 332, 343 (D.D.C.2011)). The overwhelming majority of
district courts nationwide agree with this proposition. First Time Videos, LLC, v. Does 1-76, 11-
3831 (N.D. Ill. (Aug. 16, 2011), ECF No. 38 at *10 (“[I]n any event, findings of misjoinder in
such cases are rare. The overwhelming majority of courts have denied as premature motions to
sever prior to discovery”); AF Holdings, LLC v. Does 1-162, No. 11-23036 (S.D. Fla. Jan. 12,
2012), ECF No. 22 at *7 (“courts in other cases involving file sharing through BitTorrent
protocol have held that joinder is appropriate.”); Imperial Enterprises, Inc. v. Does 1-3,145, No.
11-0529 (D.D.C. Aug. 30, 2011), ECF No. 43 at *3 (“With regard to the putative defendants’
misjoinder argument, the undersigned agrees for several reasons with the other members of this
Court that the standard for permissive joinder under Federal Rule of Civil Procedure 20(a)(2) has
been satisfied.”); MCGIP, LLC v. Does 1-18, No. 11-1495 (N.D. Cal. June 2, 2011), ECF No. 14
at *2 (“at this stage in the litigation, when discovery is underway only to learn identifying facts
necessary to permit service on Doe defendants, joinder of unknown parties identified only by IP
addresses is proper.”).
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Perhaps understanding that its substantive arguments are not a basis for granting its
requested form of relief, Respondent resorts to ad hominem attacks against Petitioner’s counsel.
(ECF No. 16 at 15-16.) Respondent claims that Petitioner’s counsel has never served a defendant
in any of its cases. (Id. at 15.) Respondent does not attempt to establish a conceptual link
between Federal Rule of Civil Procedure 45 and its attack on Petitioner’s counsel. Further,
Respondent’s claim is wildly inaccurate. Petitioner’s counsel has named several defendants in
individual actions such as the instant case. See e.g., Achte/Neunte Boll Kino v. Michael Famula,
No. 11-0903 (N.D. Ill. Feb. 9, 2011); Achte/Neunte Boll Kino v. Daniel Novello, No. 11-0898
(N.D. Ill Feb. 9, 2011); Hard Drive Productions, Inc. v. Syed Ahmed, No. 11-2828 (N.D. Ill. Oct.
25 2011); Boy Racer, Inc. v. Philip Williamson, 11-cv-3072 (E.D. Cal. Dec. 12, 2011); First
Time Videos, LLC v. Mike Younger, No. 11-3837 (N.D. Ill. Dec. 30, 2011); Millennium TGA,
Inc. v. Tyree Paschall, No. 12-792 (S.D. Ca. Apr. 2, 2012); Hard Drive Productions, Inc. v.
Gessler Hernandez, No. 11-22206 (S.D. Fla. Apr. 9, 2012); First Time Videos LLC v. William
Meyer, Jr., No. 11-690 (E.D. Va. Apr. 16, 2012); First Time Videos LLC v. Christopher Plotts,
No. 11-8336 (N.D. Ill. Apr. 17, 2012); Hard Drive Productions, Inc. v. John Doe and Matthew
Rinkenberger, No. 12-1053 (C.D. Ill. Apr. 24, 2012); AF Holdings LLC v. John Doe and John
Botson, No. 12-2048 (N.D. Cal. Apr. 24, 2012); AF Holdings LLC v. John Doe and Josh
Hatfield, No. 12-2049 (N.D. Cal. Apr. 24, 2012); AF Holdings LLC v. John Doe and Francisco
Rivas, No. 11-3076 (E.D. Cal. Apr. 25, 2012). Petitioner is at a loss to understand the relevance
of Respondent’s statements regarding the number of individuals named and served by its
counsel’s law firm.
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D. Magistrate Judge Kay did Not Err by Declining to Reassign this Matter to Judge
Robert L. Wilkins
Respondent argues that Magistrate Judge Kay erred by “failing to reassign this matter to
Judge Robert L. Wilkins.” (ECF No. 16 at 16.) Respondent argues that Petitioner attempted to
forum shop by dismissing a case similar to the present one before bringing this one. (Id.)
Respondent provides no evidence for this claim, and instead states that Petitioner must have
dropped the earlier case because of Judge Wilkins decision in Nu Image, 799 F.Supp.2d 34. (Id.)
Plaintiff’s counsel has witnessed Respondent accuse copyright holders of forum shopping with
respect to cases filed in state and federal courts nationwide. Indeed, Plaintiff’s counsel has yet to
discover a jurisdiction which Respondent does not apparently associate with forum shopping.
As explained above, see supra Part II(B), the decision in Nu Image has no relation to the
present case, so it is unclear on what basis Petitioner would dismiss a case to avoid a decision in
a completely unrelated case. Further, Respondent does not explain how this argument is a basis
for non-compliance with a valid subpoena. Finally, as explained in Plaintiff’s Opposition to
Comcast’s Notice of Related Case and Motion for Reassignment Magistrate Judge Kay could not
have reassigned the case under Local Rule 40.5, because the two cases did not involve the same
parties or the same subject matter and good cause not exist for the reassignment. (ECF No. 10.)
Therefore, Magistrate Judge Kay did not err by not reassigning the matter to Judge Wilkins.
The Court should deny Respondent’s objections and uphold Magistrate Judge Alan Kay’s
April 18, 2012 order. Magistrate Judge Kay did not err in finding Respondent’s personal
jurisdiction and misjoinder arguments were not at issue at this stage of the proceedings. Finally,
Magistrate Judge Kay did not err by not reassigning this matter to Judge Robert Wilkins.
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MILLENNIUM TGA, INC.
DATED: May 16, 2012
By: /s/ Paul A. Duffy
Paul A. Duffy, Esq. (D.C. Bar Number: IL0014)
Prenda Law Inc.
161 N. Clark St., Suite 3200
Chicago, IL 60601
Telephone: (312) 880-9160
Facsimile: (312) 893-5677
E-mail: [email protected]
Counsel for the Plaintiff
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CERTIFICATE OF SERVICE
/s/ Paul A. Duffy
PAUL A. DUFFY
The undersigned hereby certifies that on May 16, 2012, all counsel of record who are
deemed to have consented to electronic service are being served a true and correct copy of the
foregoing document using the Court’s CM/ECF system.