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Case 1:12-mc-00150-RLW Document 27 Filed 06/25/12 Page 1 of 17


Millennium TGA, Inc.,



Misc. Action No. 12-mc-00150 (RLW)

Underlying civil action pending in
the U.S. District Court for the
Southern District of Texas, No. 4:11-

Comcast Cable Communications LLC,



Before the Court is an appeal by Comcast Cable Communications LLC

(“Comcast”). Comcast appeals an Order by Magistrate Judge Alan Kay granting in part

and denying in part a Motion to Compel filed by Millennium TGA, Inc. (“Millennium”).

For the reasons set forth below, the Court vacates the Order by Magistrate Judge Kay and

denies the Motion to Compel. However, the Court exercises its discretion to allow

enforcement of the subpoena in a modified form.

I. Procedural History

This matter is before this Court after a rather circuitous journey. Without

belaboring all of the details, the relevant highlights of the odyssey are summarized below.

Millennium initially filed a complaint in this judicial district on December 7,

2011, alleging one count of copyright infringement against 939 John Doe defendants.

Millennium TGA v. Does 1–939, No. 1:11-cv-02176 (hereinafter “Millennium TGA I”).

The complaint alleged that the Doe defendants used the BitTorrent protocol to illegally

download Millennium’s copyrighted work, “Shemale Yum – Jenna Comes a ’Knocking!”

Plaintiff alleged that the actual names of the Doe defendants were unknown to the


Case 1:12-mc-00150-RLW Document 27 Filed 06/25/12 Page 2 of 17

Plaintiff, and that each of the Doe Defendants was known only by his or her Internet

Protocol address (“IP address”), which was discovered by observing the IP addresses of

the computers that entered the “BitTorrent swarm” used to download Plaintiff’s

copyrighted movie without authorization. The case was randomly assigned to the

undersigned after its filing.

On December 16, 2012, merely nine days later, Millennium voluntarily dismissed

the action without explanation. As Comcast opines, a very likely explanation for

Millennium’s dismissal – especially in light of Millennium’s subsequent actions – is that

the undersigned had previously imposed restrictions upon plaintiffs who had brought a

similar copyright infringement case, and Millennium therefore preferred to litigate before

what it considered to be a more favorable forum. In that prior case, the undersigned held

that the applicable venue statute in copyright actions, 28 U.S.C. § 1400(a), effectively

requires every defendant to be a resident of the state of the judicial district where the case

is filed, and thus, there is no good cause to take expedited discovery related to possible

infringers who are not likely to be residents of the state in which that judicial district is

located because those possible infringers cannot be prosecuted in that lawsuit. Nu Image,

Inc., v. Does 1–23,322, 799 F. Supp. 2d 34 (D.D.C. 2011). In the Millennium TGA I

complaint, the Plaintiff did not allege that any one specific Doe defendant resided in the

District of Columbia, let alone that all of the Doe defendants resided here.

On December 20, 2012, four days after dismissing the action it had filed in the

District of Columbia, Millennium filed a complaint in the United States District Court for

the Southern District of Texas, alleging copyright infringement of the same movie.

Millennium TGA, Inc. v. John Doe, 4:11-cv-4501-VG (hereinafter “Millennium TGA II”).


Case 1:12-mc-00150-RLW Document 27 Filed 06/25/12 Page 3 of 17

However, in Millennium TGA II, the complaint alleged copyright infringement against

only one Doe defendant, whose internet protocol (“IP”) address was allegedly traced to

the state of Texas using geolocation technology. The Millennium TGA II complaint also

alleged a pendent civil conspiracy claim under state law, under the theory that the one

named Doe defendant had engaged in a conspiracy with 938 unknown “co-conspirators”

to unlawfully download Plaintiff’s movie. The 939 IP addresses identified in Millennium

TGA II, the Internet Service Provider (ISP) associated with each IP address, as well as the

alleged date and time of the downloading activity for each IP address, are exactly the

same as in Millennium TGA I.

Shortly after filing Millennium TGA II, the Plaintiff sought leave to take expedited

discovery, and the court in the Southern District of Texas granted Plaintiff’s motion. See

Order Granting Plaintiff’s Motion for Leave to Take Expedited Discovery, Millennium

TGA II, Feb. 9, 2012 [Dkt. No. 6]. Plaintiff subsequently served a subpoena upon

Comcast seeking the name, address, telephone number and email address for John Doe,

who is allegedly linked to a Comcast subscriber, as well as for each Comcast subscriber

who is linked to one of the 938 alleged “co-conspirators” associated with an IP address

from the Millennium TGA II complaint.1 That subpoena issued from this court, the

District of the District of Columbia. Comcast objected to the subpoena, and Plaintiff

filed the instant petition in this court, seeking to compel Comcast to comply with the

subpoena. See Motion to Compel Compliance with Subpoena, March 7, 2012 [Dkt. No.

1]. For ease of reference, the Court will refer to this third matter as Millennium TGA III.

Comcast is only one of several ISPs who allegedly provide Internet service to

John Doe and the 938 alleged co-conspirators. Later filings indicate that 350 of the
alleged co-conspirators are linked to Comcast subscribers.


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When Plaintiff filed Millennium TGA III in this court, our local rules required

Plaintiff to list all “related cases” on the civil cover sheet at the time of filing. See Local

Rule 40.5(b)(2). Plaintiff listed only one related case, Millennium TGA II (the pending

case in the Southern District of Texas) in the Notice of Related Case filed with the court.

Because Plaintiff did not list the prior case filed in this district as a related case,

Millennium TGA III was randomly assigned, and it was given to Judge Huvelle.2 Judge

Huvelle referred the Motion to Compel to Magistrate Judge Kay, and Judge Kay issued

an order granting the motion in part and denying it in part. Memorandum Order,

Millennium TGA III, [Dkt No. 15]. Comcast appealed the ruling to Judge Huvelle.

Due to Plaintiff’s earlier filed action in this court (Millennium TGA I), Comcast

filed a motion to reassign the case to the undersigned, which Judge Huvelle granted after

the appeal was filed. Memorandum Opinion and Order, Millennium TGA III, [Dkt No.

20]. Judge Huvelle easily determined that Millennium TGA I and Millennium TGA III

were related cases under our local rules3, describing Plaintiff’s actions as akin to “judge

shopping.” Id. at 3. This Court could not agree more.

Accordingly, this matter is now before the undersigned for resolution of the

appeal of the order of the Magistrate Judge. Thus, let us turn to the merits.

Significantly, counsel failed to sign the Notice of Related Case, as required by the

Notice and by the federal rules. Dkt No. 2. Given the omission, perhaps this was not a
coincidental oversight.
including miscellaneous, shall be deemed related where a case is dismissed, with
prejudice or without, and a second case is filed involving the same parties and relating to
the same subject matter.”).

See Local Rule 40.5(a)(4) (providing that “cases whether criminal or civil,


Case 1:12-mc-00150-RLW Document 27 Filed 06/25/12 Page 5 of 17

II. General Standards Governing the Motion to Compel

Deciding the instant motion to compel by Plaintiff is the functional equivalent of

deciding a motion to quash by Comcast. See Watts v. S.E.C., 482 F.3d 501, 508 (D.C.

Cir. 2007) (describing challenge to agency’s refusal to comply with the subpoena as the

same as a Rule 45 motion to quash by the agency). Rule 45 specifies that “the issuing

court must quash or modify a subpoena that . . . requires disclosure of privileged or other

protected matter, if no exception or waiver applies; . . . or subjects a person to undue

burden.” Fed. R. Civ. P. 45(c)(3)(A)(iii)-(iv) (emphasis added). The person objecting to

production has a heavy burden to show that the subpoena should not be enforced.

Northrop Corp. v. McDonnell Douglas Corp., 751 F.2d 395, 403 (D.C. Cir. 1984).

The text of Rule 45 makes quite clear that parties and attorneys who issue

subpoenas have an affirmative duty to prevent undue burden or expense to the persons

subject to the subpoena:

A party or attorney responsible for issuing and serving a subpoena

must take reasonable steps to avoid imposing undue burden or expense on
a person subject to the subpoena. The issuing court must enforce this duty
and impose an appropriate sanction—which may include lost earnings and
reasonable attorney's fees—on a party or attorney who fails to comply.

Fed. R. Civ. P. 45(c)(1).

Accordingly, our circuit court has admonished district courts to be “generally

sensitive to the costs imposed on third parties” when considering a motion to compel (or

quash) pursuant to Rule 45, reminding us to consider “whether the discovery sought is

‘obtainable from some other source that is more convenient, less burdensome, or less

expensive.’” Watts, 482 F.3d at 508 (quoting Fed. R. Civ. P. 26(b)(2)(C)(i)). Thus, courts


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have the discretion to limit discovery to prevent undue expense to third parties, even if

the discovery sought is within the permissible scope of Rule 45 and Rule 26. See Herbert

v. Lando, 441 U.S. 153, 177, (1979) (noting that “the discovery provisions, like all of the

Federal Rules of Civil Procedure, are subject to the injunction of Rule 1 that they “be

construed to secure the just, speedy, and inexpensive determination of every action” and

that “ the district courts should not neglect their power to restrict discovery where ‘justice

requires [protection for] a party or person from . . . undue burden or expense . . . .””)

(quoting the 1970 Advisory Committee Notes to Fed. R. Civ. P. 26).

Just as it is improper under Rule 45 to subject non-parties to undue expense, it is

also improper to subject non-parties to the undue inconvenience of litigating in a distant

forum. A classic example of such an “abuse of subpoena” is described by a case cited

approvingly in the Advisory Committee Notes to Rule 45. See Board of Ed. v.

Farmingdale Classroom Teach. Ass'n, 343 N.E.2d 278 (N.Y. 1975) (cited in the 1991

Advisory Committee Notes to Fed. R. Civ. P. 45). In Farmingdale, the court held that

abuse of process occurs when a party manipulates the circumstances to serve process in

an inconvenient forum for the persons who must respond, even if it is technically legal to

proceed in that forum, because “such trickery and cunning [is] ‘degrading to an honorable

profession, and well calculated to bring the administration of justice into reproach and

contempt. . . .’” Id. at 282 (quoting Dishaw v. Wadleigh, 44 N.Y.S. 207, 209 (3d Dep't.

1897)).4 For these reasons, our circuit court has held that “nonparty witness territorial

Furthermore, a motion to quash may be justified where the subpoena is a

transparent attempt to circumvent the law. See, e.g., Laker Airways Ltd. v. Pan American
World Airways, 607 F. Supp. 324, 326-27 (S.D.N.Y. 1985) (quashing subpoena served in
New York, but seeking documents located in the United Kingdom, in a clear attempt to


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convenience” is a valid factor to consider on a motion for a protective order in connection

with a Rule 45 subpoena. In re Sealed Case, 141 F.3d 337, 343 (D.C. Cir. 1998).

III. Application of Standards to Millennium's Subpoena

Millennium has served a subpoena upon Comcast to obtain the name, address,

telephone number and email address for the Comcast subscriber whose IP address is

associated with John Doe, the only defendant identified in the Millennium TGA II

complaint. Millennium states that it needs this identifying information so that it can

name that subscriber as a defendant in the lawsuit. In addition, Millennium seeks

identifying information for each of the 350 Comcast subscribers who is among the 938

alleged “co-conspirators” associated with an IP address from the Millennium TGA II

complaint. Millennium states that these individuals are potentially “joint tortfeasers” and

that it needs to know their identities so that it can investigate the alleged conspiracy and

potentially add those individuals as defendants in the Millennium TGA II complaint.

Comcast objected to the subpoena, arguing, among other things, inconvenience of the

forum, inadequate time for compliance, inadequate assurance of payment, improper

joinder of the prospective Doe defendants, and lack of personal jurisdiction over the

prospective Doe defendants. Millennium responded that Comcast was given adequate

time and compensation for compliance, that Comcast had no standing to raise joinder or

personal jurisdiction objections on behalf of the current and prospective Doe defendants,

and that, furthermore, any such objections were premature. Magistrate Judge Kay agreed

that the joinder and personal jurisdiction objections were premature and overruled all of

Comcast's other objections, except with respect to inadequate time for compliance.

circumvent the requirements of the Hague Convention on Taking of Evidence Abroad in
Civil or Commercial Matters).


Case 1:12-mc-00150-RLW Document 27 Filed 06/25/12 Page 8 of 17

As set forth above, the Plaintiff in this case had an affirmative duty to “take

reasonable steps to avoid imposing undue burden or expense on [the] person[s] subject to

the subpoena. . . .” Fed. R. Civ. P. 45(c)(1). Accordingly, preventing undue burden

resulting from “nonparty territorial inconvenience” is a factor that is required to be

considered by the district court. In re Sealed Case, 141 F.3d at 343. Indeed, the burden

and inconvenience not just to Comcast, but also to the third-party Comcast subscribers, is

a relevant consideration, since those subscribers have a privacy interest in the information

sought by Millennium. The district court has an obligation to allow third parties to be

heard when their privacy or other rights may be affected by enforcement of the subpoena.

See, e.g., In re Subpoena Duces Tecum Issued to Commodity Futures Trading Com'n, 439

F.3d 740, 742-49 (D.C. Cir. 2006) (court considered privilege objections of WD Energy,

whose documents were in possession of the government, even though the subpoena was

served upon the government, not WD Energy, and even though the government

interposed no objection with respect to the production of WD Energy's documents);

Boeing Airplane Co. v. Coggeshall, 280 F.2d 654, 662 (D.C. Cir. 1960) (district court was

required to conduct further proceedings as necessary to protect the rights of Boeing's

competitors, even though they were not before the court, because proprietary information

belonging to those competitors could potentially be disclosed in response to the


Comcast pointed out in its opposition to the Motion to Compel that of the 351

Comcast subscribers whose personal identifying information is sought, only three reside

in the District of Columbia. [Dkt No. 7 at 2]. The Plaintiff has not directly responded to

Comcast's arguments about the inconvenience of this forum for issuing a subpoena


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affecting the rights of non-parties residing outside of the District of Columbia; instead,

Plaintiff has simply made the vague assertion that it brings lawsuits where defendants

“are likely to be located.” [Dkt. No. 11 at 7-8]. There is no rhyme or reason as to why

the rights of all the 351 subscribers should be heard and adjudicated in the District of

Columbia. The complaint alleges that Plaintiff is organized under the laws of the State of

Hawaii (with its principal place of business in Los Angeles) and that the only named Doe

defendant resides in Texas. 348 of the 351 Comcast subscribers whose personal

identifying information is sought – including the only defendant – reside somewhere

other than the District of Columbia. Thus, there is nothing in the record showing why

this forum was appropriate to issue a subpoena for personal identifying information for

all 351 Comcast subscribers. Engaging in “one stop shopping” in the District of

Columbia for the personal identifying information for all Comcast subscribers may be

convenient, for whatever reason, to the Plaintiff. Nonetheless, this approach hardly

demonstrates compliance with the Plaintiff's affirmative duty pursuant to Rule 45 to take

“reasonable steps” to avoid undue burden and territorial inconvenience to the 348 (among

the 351 total) subscribers residing outside of the District of Columbia. The court below,

following Plaintiff's lead, also gave inadequate consideration to the issue of nonparty

burden and territorial inconvenience, an error of law requiring reversal. See Fed. R. Civ.

P. 72(a); Local Rule 72.2(c).

The anomalies in the present circumstances are many. The only defendant, John

Doe, resides in Texas; yet he or she will have to file and litigate any objections in the

District of Columbia. Experience has shown that many of the subscribers are laypersons

without legal background, and that most will not have counsel and will therefore appear


Case 1:12-mc-00150-RLW Document 27 Filed 06/25/12 Page 10 of 17

in propria persona. Given that, it is very important that these subscribers are not subject

to litigating in an arbitrarily-selected forum that is hundreds, or even thousands, of miles

away from their residences. Forcing the Comcast subscribers to litigate their objections

in a distant forum is completely unnecessary, since the Plaintiff can serve a subpoena

upon Comcast in any judicial district where Comcast subscribers reside.

The situation is even more burdensome for the nonparty subscribers because of an

error committed by the Plaintiff. The order granting expedited discovery contained

language, which was proposed and drafted by the Plaintiff, stating that “[s]ubscribers

shall have thirty (30) days from the date of notice of the subpoena upon them to file any

motions in this Court to contest the subpoena. If the thirty-day period lapses without a

contest, the ISP will have ten (10) day [sic] thereafter to produce the information in

response to the subpoena to Plaintiff.” See Order Granting Plaintiff’s Motion for Leave

to Take Expedited Discovery at ¶ 5, Millennium TGA II, Feb. 9, 2012 [Dkt. No. 6]

(emphasis added). Thus, the discovery order from the Texas court purported to set terms

and conditions for compliance with any future subpoena, and it even specified that

objections were required to be filed in Texas, rather than with the court from which any

subpoena issued. The order has caused considerable confusion, as over a dozen ISP

subscribers have followed the mandate of the Order and filed letters, objections, motions

for protective orders and motions to quash in the Texas court. See Millennium TGA II,

Dkt Nos. 10, 12, 14, 15, 17, 20, 22, 27, 31, 32, 33, 35, 36, 38, 40, 41.5 In addition, many

One such objection attached a letter from Comcast to the ISP subscriber, in

which Comcast advises the subscriber that if s/he intends to object, then s/he must file
“something with both the Southern District of Texas and the District of Columbia. . . .”
Millennium TGA II, Dkt No. 15. This is an understandable directive from Comcast, given
the language in the Texas order and the operation of Rule 45.


Case 1:12-mc-00150-RLW Document 27 Filed 06/25/12 Page 11 of 17

of the affected Comcast subscribers have filed objections in this Court. Thus, the

Plaintiffs have created a situation where motions to quash are being filed in two

jurisdictions simultaneously, effectively doubling the burden on the nonparty

subscribers.6 This doubly burdensome situation is also improper, because it is well

settled that “only the issuing court has the power to act on its subpoenas.” In re Sealed

Case, 141 F.3d at 341 (analyzing the language and context of Rule 45, relevant caselaw

and the Advisory Committee Notes to Rule 45); accord In re Digital Equipment Corp.,

949 F.2d 228, 231 (8th Cir. 1991) (district court where underlying action was pending did

not have jurisdiction to rule on objections made to deposition subpoenas obtained from

district court in another district). Despite the confusion and multiple objections filed by

Comcast subscribers in the Texas court, it appears that the Plaintiff has made no effort to

correct the erroneous language (that it proposed) in the Texas discovery order. The Court

fails to see how Plaintiff's careless action (and inaction) are consistent with its affirmative

obligation to to take “reasonable steps” to avoid undue burden and territorial

inconvenience to the persons affected by the subpoena.

Based on this record, this Court would be justified in denying the Motion to

Compel in its entirety based on the undue burden and territorial inconvenience to the

Comcast subscribers (at least until the erroneous Texas discovery order and the confusion

it has caused has been corrected). However, the Court is mindful of the efforts expended

to date by Plaintiff, as well as Plaintiff's need and desire to prosecute any potentially

viable claims of copyright infringement and will therefore exercise its discretion to

enforce the subpoena in a modified form.

quash. See Millennium TGA II, Dkt Nos. 16, 30.

Indeed, the Texas court has ruled upon (by denying) at least two such motions to


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The Court will deny the request for identifying information for the Comcast

subscribers. As to Doe, the only named defendant, he or she is linked to a Comcast

subscriber who resides in Texas. It is unduly burdensome to force that subscriber to

travel over 1000 miles to the District of Columbia to protect his or her rights, particularly

when the case is pending in Texas and Comcast can be served with a subpoena in Texas.

As to the 350 Comcast subscribers who are linked to alleged “co-conspirators” of

Doe, the Court also denies the request for identifying information as unduly burdensome.

The Fourth Circuit, joining other courts, has recently held that a state law civil conspiracy

claim is preempted by the federal Copyright Act. Tire Eng’g & Distrib’n, LLC v.

Shandong Linglong Rubber Co., Nos. 10-2271, 10-2273, 10-2321, 2012 WL 2036971

*15 (4th Cir. June 6, 2012); accord Gary Friedrich Enters., LLC v. Marvel Enters., Inc.,

713 F. Supp. 2d 215, 229 (S.D.N.Y. 2010); Tegg Corp. v. Beckstrom Elec. Co., 650 F.

Supp. 2d 413, 423-428 (W.D. Pa. 2008); Higher Gear Group, Inc. v. Rockenbach

Chevrolet Sales, Inc., 223 F. Supp. 2d 953, 960 (N.D. Ill. 2002); Hoey v. Dexel Sys.

Corp., 716 F. Supp. 222, 224 (E.D. Va. 1989) ; Aqua Bay Concepts Inc. v. Grosse Point

Board of Realtors, 24 U.S.P.Q.2d 1372, 1376 (E.D. Mich. 1992); see also Pacific Century

International, Ltd. v. Does 1–37, --- F.Supp.2d ----, 2012 WL 1072312 *4 (N.D. Ill. May

21, 2012) (ruling that plaintiffs in BitTorrent copyright infringement action had not, and

could not, plausibly plead facts establishing an agreement, a required element of the civil

conspiracy claim). If the civil conspiracy claim is invalid, there is no good cause for

discovery related to the alleged co-conspirators. As our circuit court has explained, “[t]he

federal courts are not free-standing investigative bodies whose coercive power may be

brought to bear at will in demanding documents from others. Rather, the discovery


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devices in federal court stand available to facilitate the resolution of actions cognizable in

federal court.” Houston Business Journal, Inc. v. Office of Comptroller of Currency,

U.S. Dept. of Treasury, 86 F.3d 1208, 1213 (D.C. Cir. 1996) (emphasis added)7; see also

Nu Image, 799 F. Supp. 2d at 36-37.

The burden to nonparty subscribers should not be ignored merely due to the fact

that IP addresses associated with copyright infringement has allegedly been linked to

their Internet accounts. As one court recently observed, “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

As to any potential Doe defendants linked to Comcast subscribers residing

outside of Texas, it is also unlikely that Plaintiff can prosecute a copyright infringement
claim against them in the Millennium TGA II lawsuit. The Fifth Circuit has held that the
copyright venue statute is a “special venue statute,” and thus a copyright case “may be
brought only in the district where the defendant ‘resides or may be found.’” Time, Inc. v.
Manning, 366 F.2d 690, 696 (5th Cir. 1966) (quoting 28 U.S.C. § 1400(a)). In addition,
the Fifth Circuit has held that a Texas federal court does not have personal jurisdiction
over a copyright infringement case solely because the alleged infringer had contacts with
Texas, where “the merits of the copyright question” had no relationship with Texas. Ham
v. La Cienega Music Co., 4 F.3d 413, 416 (5th Cir.1993); see also Healix Infusion
Therapy, Inc. v. HHI Infusion Services, No. H-09-3440, 2010 WL 2277389, *4 (S.D. Tex.
June 3, 2010) (personal jurisdiction was lacking in Texas where there was no showing
that the defendant directed any specific acts towards Texas); Action Tapes v. Weaver, No.
3:05-CV-1693-H, 2005 WL 3199706, at *3 (N.D. Tex. Nov. 23, 2005) (“absent other
factors, an individual is not made subject to personal jurisdiction in the Northern District
of Texas for alleged copyright infringement by virtue of an eBay auction transaction
conducted with a Dallas resident”); LCW Automotive Corp. v. Restivo Enterprises, No.
SA-04-CA-0361-XR, 2004 WL 2203440, at *7 (W.D. Tex. Sept. 24, 2004) (no personal
jurisdiction in copyright infringement action brought in Texas merely because plaintiff
was a Texas corporation and defendant, a California corporation, allegedly copied
photographs and text from plaintiff’s website); Sefton v. Jew, 201 F. Supp. 2d 730, 742-
44 (W.D. Tex. 2001) (no personal jurisdiction over California resident in copyright
infringement case merely because Plaintiff resided in Texas and the alleged infringement
inflicted financial harm upon a Texas resident).

Case 1:12-mc-00150-RLW Document 27 Filed 06/25/12 Page 14 of 17

subscriber, the alleged infringer could be the subscriber, a member of his or her family, an

employee, invitee, neighbor or interloper.” In re BitTorrent Adult Film Copyright

Infringement Cases, Nos. 11-3995, 12-1147, 12-1150, 12-1154, 2012 WL 1570765 * 4-5

(E.D.N.Y. May 1, 2012) (and cases cited therein). Plaintiff's counsel in the preceding

case (who do not represent the Plaintiff in this action) conceded that a substantial

percentage of the Internet subscribers linked to the IP addresses used in BitTorrent

downloading are not actually liable for copyright infringement. Id.

The burden to nonparty subscribers is also due serious consideration because of

what is likely to transpire once Plaintiff's counsel obtains the identifying information of

the subscribers. A complaint recently filed in the Northern District of California

describes and attaches actual correspondence that was allegedly sent by counsel

representing the Plaintiff in the matter before this Court. See Complaint [Dkt. No. 1],

Abrahams v. Hard Drive Productions, Inc., No. 3:12-1006 (N.D. Cal. filed Feb. 28,

2012). The Court has reviewed the pleadings in that matter and takes judicial notice of

their contents. In the Abrahams matter, the present counsel sent the subscriber a

settlement demand letter for $3400 and an unsigned memorandum containing a purported

legal analysis of why asserting certain defenses to the copyright infringement action

would be futile.8 Id. at Exhs. A & B. The subscriber was also sent a “document hold”

letter demanding that he not delete any Internet history, files or emails on his computer,

that he not delete, install or update any software program on his computer, and even that

The purported legal analysis is incomplete and slanted, to say the least – the

memo essentially asserts that an Internet subscriber has a duty to know of any infringing
activity that passes through her Internet router, and that anything less is “willful
blindness” that subjects the subscriber to liability for contributory copyright
infringement, a rather dubious proposition.


Case 1:12-mc-00150-RLW Document 27 Filed 06/25/12 Page 15 of 17

he not delete any voicemail messages or data on his cell phones or Personal Digital

Assistant devices. Id. at Ex. D. Plaintiff’s counsel even warned of sanctions and civil

liability if spoliation were to occur. Id. The potential burden of such a data preservation

demand takes greater significance when the record in this case indicates that the lawyers

representing Plaintiff in this case commonly bring these BitTorrent copyright actions,

seek identifying information, keep the case pending for several months, and then never

prosecute the lawsuit against those subscribers who do not settle with them.9 [Dkt No. 7

at 15-16]. Given the intimidating tactics and oppressive demands made by Plaintiff's

counsel in other cases, it is particularly appropriate to require the Plaintiff to proceed

according to the federal rules and only allow discovery related to valid claims that can

and actually will be prosecuted in the federal court where the claims have been filed.

Nonetheless, the Court is sympathetic to Plaintiff's desire to learn the location of

potential infringers of its copyrighted material in an efficient fashion, and this Court

seeks to facilitate those efforts in a manner permissible under the federal rules. Comcast

has done a preliminary analysis that establishes the location of each of the 351 IP

addresses of Comcast subscribers identified in the subpoena. [Dkt No. 7 at 6]. Thus,

Comcast has the ability to, without undue burden, verify the preliminary analysis and

Based on the reports of unduly burdensome actions and harassing

communications from some lawyers prosecuting these cases, courts have sometimes
imposed protective orders and regulated the communications with Internet subscribers
whose personal identifying information is sought in these BitTorrent copyright actions.
See, e.g. Digital Sin, Inc. v. Does 1-27, 2012 WL 2036035 (S.D.N.Y. June 6, 2012)
(refusing disclosure of email addresses and telephone numbers, and requiring specific and
detailed disclosures to subscribers advising them of their rights and how to object to
disclosure of their identifying information to the plaintiff); Malibu Media, LLC v. Does
1-5, 2012 WL 2001968 (S.D.N.Y. June 1, 2012) (refusing disclosure of telephone
numbers of subscribers due to potential for harassing phone calls from plaintiff's


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provide the city and state of residence for the subscriber associated with each of the 351

requested IP addresses. This information can be turned over to the Plaintiff without

providing notice to the subscribers, since providing the city and state, without more, is

not providing personally identifying information as to any subscriber. See 47 U.S.C. §

551(a)(2) (“personally identifiable information” pursuant to the Cable Act does not

include information that “does not identify particular persons”); see also Scofield v.

Telecable of Overland Park, Inc., 973 F.2d 874, 876 n2. (10th Cir. 1992) (construing

statute). The Plaintiff can then bring an action against the John Does linked to each of

those 351 Comcast subscribers in each of the judicial districts where they reside, and

Plaintiff can then serve a subpoena upon Comcast to obtain the identifying information

for any subscriber in each of the judicial districts where the subscribers reside (which is

also where any action against any Doe defendant linked to any particular subscriber

would be pending). Such a procedure complies with the admonition of our circuit court

to consider “whether the discovery sought is ‘obtainable from some other source that is

more convenient, less burdensome, or less expensive.’” Watts, 482 F.3d at 508 (quoting

Fed. R. Civ. P. 26(b)(2)(C)(i)).

This relief is appropriate because the federal courts, and its subpoena power, are

not to be used to gather information that is only relevant to invalid claims, for that is

tantamount to a fishing expedition. Nor is it appropriate to employ the subpoena power

of the federal courts to unduly burden nonparties with the expense and obligation of

protecting their rights in a forum that is arbitrarily chosen and decidedly inconvenient.

For the foregoing reasons, Millennium’s Motion to Compel is denied. It is hereby

ordered that by no later than thirty (30) days from the issuance of this Opinion, Comcast


Case 1:12-mc-00150-RLW Document 27 Filed 06/25/12 Page 17 of 17

shall provide the city and state of residence for the subscriber associated with each of the

351 IP addresses requested in Millennium’s subpoena. It is further ordered that Comcast

preserve any data related to the 351 IP addresses for a period of at least 180 days from

date of this Opinion in case Plaintiff seeks to serve a subsequent subpoena.

An order accompanies this Memorandum.

Date: June 25, 2012

United States District Judge