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Case: 1:12-cv-06672 Document #: 51 Filed: 03/07/13 Page 1 of 31 PageID #:252



IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION


MALIBU MEDIA, LLC,
Plaintiff,
v.


DAVID J. REYNOLDS, FELIX STANEK,
GREGORY BLAKE and JOHN DOES 2-8, 10,
11, 14, and 15,
Defendants.






12 C 6672

Judge Virginia M. Kendall

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MEMORANDUM OPINION AND ORDER



Plaintiff Malibu Media, LLC (“Malibu Media”), a California film company that owns

copyrights to a large number of pornographic films, filed this suit against David J. Reynolds,

Felix Stanek, Gregory Blake, and eleven other anonymous defendants known to Malibu Media

only by their alleged Internet Protocol (“IP”) address (collectively, the “Defendants”).1 Malibu

Media alleges that the Defendants committed direct and contributory infringement by copying

and distributing a website containing fifteen federally registered copyrighted movies owned by

Malibu Media in violation of the United States Copyright Act of 1976, as amended, 17 U.S.C. §

101 et seq. One of the unidentified defendants, John Doe 15 (“Doe 15”), moves for an Order to

Show Cause for why Malibu Media’s Complaint should not be dismissed for lack of standing.

Doe 15 also moves to quash a subpoena served by Malibu Media upon Doe 15's Internet Service

Provider, sever based on improper joinder, and proceed anonymously through the dispositive

motion phase of this case. For the reasons stated herein, Doe 15's Motion to Quash and Motion

to Show Cause are denied. Doe 15's Motion to Proceed Anonymously is granted. Because the



1 On February 14, 2013, Malibu Media voluntarily dismissed Does 2-8, 10, 13, and 14 (Dkt. Nos. 44, 47-

48.) The only remaining defendants are David J. Reynolds, Felix Stanek, Gregory Blake, Doe 11, and Doe 15.



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Court, on its own motion, severs all remaining Defendants in this case with the exception of Doe

15, Doe 15’s Motion to Sever is denied as moot.

BACKGROUND



Malibu Media alleges that the Defendants were all users of “BitTorrent,” a file sharing

protocol (or set of computer rules) commonly used for distributing and sharing data on the

Internet. According to Malibu Media each of the Defendants used the BitTorrent protocol to

copy and distribute, without authorization, a torrent file containing fifteen of Malibu Media’s

registered works (the “Works”). Investigators retained by Malibu Media identified fifteen IP

addresses, listed in Exhibit A of Malibu Media’s Amended Complaint, that are alleged to have

used the BitTorrent protocol to reproduce or distribute the Works. The individuals using these IP

addresses are alleged to have engaged in infringing activity on different dates between June 9,

2012 and July 28, 2012 (Pl. Ex. A, Dkt. No. 24-1, p. 1.)



BitTorrent is a peer-to-peer file sharing system used to transfer files over the Internet.

The BitTorrent protocol’s popularity stems from its ability to distribute large files without

imposing a heavy burden on the source computer and network. Before BitTorrent, users seeking

to download data through peer-to-peer file sharing networks relied on the single-source

technique, which required a user to form a one-to-one connection with a host computer for the

purpose of downloading a file from that host. While the single-source method may have been

adequate for transferring relatively small amounts of data, it proved cumbersome for users

seeking to transfer larger data files. This is because the single source method requires one host

computer and network to shoulder the entire burden of uploading a file to a particular user. The

BitTorrent protocol overcomes this limitation by allowing users to join a “swarm” of host

computers to download and upload fractions, or “pieces,” of large files from each other



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simultaneously, resulting in a reduced load on any one computer. While use of the BitTorrent

protocol itself is not illegal, many of its users use it to unlawfully download and distribute

copyrighted works.



In order to join a swarm and use the BitTorrent protocol, a user must first download a

BitTorrent “Client Program,” a software program that serves as the user’s interface during the

process of uploading and downloading data. Individuals who join a swarm to download and

distribute a particular file are called “peers.” A swarm is composed of two types of peers:

“leechers” and “seeds.” “A leecher is a peer in the process of acquiring a file. A seed is a peer

that already has a complete copy of the file and that remains in the torrent to serve the leechers.

Every torrent requires at least one seed.” Annemarie Bridy, Is Online Copyright Enforcement

Scaleable?, 13 Vand. J. Ent. & Tech. L. 695, 700 (2011). When a seed user decides to distribute

a new file, he or she uses the Client Program to create a “torrent descriptor file.” The Client

Program then takes the target computer file, also known as the “Initial Seed,” and divides it into

segments called “pieces.” Once the initial seed is divided into pieces, the Client Program assigns

each piece a unique alphanumeric identifier (a “hash identifier”) and records each piece’s hash

identifier within the torrent descriptor file. After the Initial Seed is created and uploaded to a

torrent site, other peers may begin to download and upload pieces of the computer file to which

the torrent is linked. BitTorrent’s groundbreaking feature – its ability to allow users to pull small

pieces of a sought-after file from several host computers – ensures that no single host is burdened

with the task of uploading the entire file to a particular user. In order to protect the integrity of

each piece and to ensure that any modification to a piece can be reliably detected, the hash

identifier for a particular piece is compared to the hash identifier recorded in the torrent

descriptor file for that piece every time it is downloaded by another user. Thus the hash



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identifier works like an electronic fingerprint, identifying the source and origin of the piece and

verifying that the piece is authentic, error-free, and uncorrupted.



In order to download a file using the BitTorrent protocol, a peer user must access a

“torrent site,” which indexes torrent files currently available for copying and distribution. As a

peer receives pieces of the seed file, that peer automatically begins to upload those pieces to

other peers in the swarm. In this way, BitTorrent’s architecture resolves the free-rider problem

that plagued older file-sharing networks such as Napster, Kazaa, and Limewire. Unlike its

predecessors, which allowed users to download the content they desired without ever having to

upload content to other peers, BitTorrent forces every downloader to also be an uploader of the

transferred file, “making it architecturally impossible for any peer on the network to take without

giving.” Id. at 700-01; see also Call of the Wild Movie, LLC v. Does 1-1062, 770 F. Supp. 2d

332, 343 (D.D.C. 2011). The BitTorrent protocol does not entirely avoid the free-rider problem,

however, because a peer is only forced to “pay it forward” by uploading to other users while he

or she remains connected to the swarm. A peer may still avoid the burden of uploading to other

peers by disconnecting from the swarm after obtaining a complete copy of the desired file.



Once a peer user has received every piece of the file, the BitTorrent Client Program

rearranges the various pieces into their correct order, resulting in a file identical to the initial

seed. This file becomes an additional seed within the same swarm, and remains available to

other peers as long as the user that is in possession of the file remains connected to the swarm

through the Client Program. The presence of the additional seed file also increases the speed,

efficiency, and reliability of downloading activity for future peers entering the swarm. See

Digital Sin, Inc. v. Does 1-27, No. 12 Civ. 3873 (JMF), 2012 WL 2036035, at *1 (S.D.N.Y. June

6, 2012). Therefore, users derive a benefit from the interconnected architecture of the BitTorrent



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protocol even though they generally do not communicate with one another and will not have

information about other users in their swarm other than their IP addresses. However, if a peer

leaves the swarm after obtaining the seed file by closing the Client Program, changing the Client

Program’s settings to turn off automatic uploading, disconnecting from the Internet, or turning

off his computer, peers who subsequently enter the swarm do not benefit from the earlier peer’s

activity.

DISCUSSION



As the BitTorrent protocol allows users to share information anonymously, Malibu Media

knows the eleven anonymous defendants only by their IP addresses. These IP addresses were

assigned to the Defendants by their respective Internet Service Providers. On September 5,

2012, Malibu Media filed a motion for early discovery seeking leave to serve third party

subpoenas pursuant to Rule 45 upon the unidentified Defendants’ Internet Service Providers

prior to a Rule 26(f) conference so that it may learn the Doe Defendants’ true identities. Doe 15,

one of the yet-to-be identified defendants in this action, argues the following in response to

Malibu Media’s motion for early discovery: (1) Malibu Media lacks standing to bring this action;

(2) the subpoena seeking his identity should be quashed because it would impose an undue

burden on Doe 15; (3) Doe 15 has been improperly joined in this lawsuit and should be severed

from the case; and (4) Doe 15 should be permitted to proceed anonymously through the

dispositive motion phase of the proceedings because his privacy interests outweigh the public’s

interest in knowing his identity.





I.

Standing

In order to acquire standing to pursue a claim for copyright infringement, a plaintiff must

show the ownership of a valid copyright. Feist Publications, Inc. v. Rural Tel. Serv. Co., 499



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U.S. 340, 361 (1991); HyperQuest, Inc. v. N’Site Solutions, Inc., 632 F.3d 377, 381 (7th Cir.

2011) (“The Copyright Act restricts the set of people who are entitled to bring a civil action for

infringement to those who qualify as ‘[t]he legal or beneficial owner of an exclusive right under

a copyright ....’ ”) (quoting 17 U.S.C. § 501(b)). Under the Copyright Act, copyright ownership

“vests initially in the author or authors of the work.” Community for Creative Non-Violence v.

Reid, 490 U.S. 730, 737 (1989) (quoting 17 U.S.C. § 201(a)). The author is “the party who

actually creates the work, that is, the person who translates the idea into a fixed, tangible

expression entitled to copyright protection.” Id; see also 17 U.S.C. § 102. When a copyrighted

work is classified as a “work for hire,” the “employer or other person for whom the work was

prepared is considered the author.” 17 U.S.C. §§ 101, 201(b); see also Billy-Bob Teeth, Inc. v.

Novelty, Inc., 329 F.3d 586, 591 (7th Cir. 2003).



The Works at issue in this case were registered with the United States Copyright Office

as “works for hire” under 17 U.S.C. § 201(b). According to Doe, these copyright registrations

are defective because Malibu Media did not exist as an entity when any of the Works were

created, thereby making it impossible for the works to be “made for hire” by Malibu Media. Doe

maintains that as a result of this defect, Malibu Media lacks Article III standing in this action and

argues that the subpoena seeking his personal identifiers should therefore be quashed. Malibu

Media does not dispute that the Works were registered with the Copyright Office as “works for

hire,” but explains that this designation was made by mistake. According to Malibu Media, each

of the Works was created by Brigham Field (“Field”), Malibu Media’s owner, and assigned to

Malibu Media when Field formed the company in February of 2011. By the time Malibu Media

decided to register its copyrights for the Works with the United States Copyright Office, it had

created a number of additional films, and therefore possessed copyrights to movies produced



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both before and after it came into existence. Instead of registering the films under two separate

classifications, Malibu Media accidentally registered all of its films as “works for hire,” – a

classification that in fact should only have been applied to films created after Malibu Media was

formed. Malibu Media states that it has since filed notices of correction with the United States

Copyright Office to amend this classification.



The error in Malibu Media’s registration with the United States Copyright Office does

not deprive it of standing to enforce its copyrights. The Seventh Circuit has refused to invalidate

copyrights based on challenges from alleged third-party infringers where the copyright at issue

was mistakenly registered as a “work for hire” before the plaintiff entity existed and there is no

dispute between the copyright owner and the transferee about the status of the copyright. See

Billy-Bob Teeth, Inc. v. Novelty, Inc., 329 F.3d 586, 591 (7th Cir. 2003). In Billy-Bob Teeth, the

plaintiff mistakenly registered his copyright as a “work for hire” to a corporation that did not

exist when the work was created. Id. at 589. The district court determined that because the work

predated the plaintiff’s existence, the plaintiff could not enforce a copyright registered as a

“work made for hire.” Id. at 590. On appeal, the Seventh Circuit agreed that the plaintiff could

not claim that the work was made for hire because, among other things, the corporation was not

formed until one year after the work was authored. Id. at 591. However, the court found that the

error on the registration was not fatal to the plaintiff’s case. See id. (citing Urantia Foundation v.

Maaherra, 114 F.3d 955, 963 (9th Cir. 1997) (“[C]ase law is overwhelming that inadvertent

mistakes on registration certificates do not ... bar infringement actions, unless the alleged

infringer has relied to its detriment on the mistake, or the claimant intended to defraud the

Copyright Office by making the misstatement.”); Data Gen. Corp. v. Grumman Sys. Support

Corp., 36 F.3d 1147 (1st Cir. 1994); Whimsicality, Inc. v. Rubie’s Costume, Co., 891 F.2d 452



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(2d Cir. 1989)).



The facts here are strikingly similar. Field, like the plaintiff in Billy-Bob Teeth,

registered his copyrights as “works for hire” to an entity that was not formed until after the work

was authored. There is no dispute between Field and Malibu Media regarding the ownership of

the copyrights, and Doe 15 does not refute that Field assigned all of his copyrights to Malibu

Media, which then registered those copyrights with the United States Copyright Office. Based

on these facts, the Court finds that the technical defect in Malibu Media’s registration does not

deprive it of standing to enforce its copyrights. See Billy-Bob Teeth, 329 F.3d at 592–93

(“[W]here there is no dispute between the copyright owner and the transferee about the status of

the copyright, ‘it would be unusual and unwarranted to permit a third-party infringer to invoke

section 204(a) to avoid suit for copyright infringement.’ ”) (quoting Imperial Residential Design,

Inc. v. Palms Development Group, Inc., 70 F.3d 96, 99 (11th Cir. 1995)). Accordingly, Doe 15's

Motion to Show Cause is denied.





II. Motion to Quash

Federal Rule of Civil Procedure 45(a) permits the issuance of subpoenas to produce

documents and other tangible things in the custody or control of a person. Fed.R.Civ.P. 45(a).

Under Rule 45, a court must quash or modify a subpoena if it (1) fails to allow a reasonable time

to comply; (2) requires a person who is neither a party nor a party’s officer to travel more than

100 miles; (3) requires disclosure of privileged or other matter, if no exception or waiver applies;

or (4) subjects a person to undue burden. Fed.R.Civ.P. 45(c)(3)(A)(i)-(iv). The party seeking to

quash a subpoena under Rule 45(c)(3)(A) bears the burden of demonstrating that the information

sought subjects a person to undue burden. As with other discovery issues, deciding whether to

grant a motion to quash lies within the sound discretion of the district court. See, e.g., Sullivan v.



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Gurtner Plumbing, Inc., No. 11-cv-6261, 2012 WL 896159, at *1 (N.D. Ill. Mar. 13, 2012)

(citing United States v. Ashman, 979 F.2d 469, 495 (7th Cir. 1992)).



Here, Doe 15 seeks to quash a subpoena issued to Comcast Cable (“Comcast”), Doe 15’s

Internet Service Provider and a nonparty in this case. As a general rule, Doe 15 lacks standing to

quash a subpoena issued to a nonparty unless he has a claim of privilege attached to the

information sought or unless it implicates his privacy interests. See United States v. Raineri, 670

F.2d 702, 712 (7th Cir. 1982) (“A party has standing to move to quash a subpoena addressed to

another if the subpoena infringes upon the movant’s legitimate interests.”). District courts in this

circuit are divided on the issue of whether a Doe defendant accused of copyright infringement

has standing to object to a subpoena issued to his Internet Service Provider. Compare Sunlust

Pictures, LLC v. Does 1-75, No. 12 C 1546, 2012 WL 3717768, at *2 (N.D. Ill. Aug. 27, 2012)

(Tharp, J.) (Doe defendant had standing to object to the issuance of a subpoena upon his Internet

Service Provider because he possessed “at least a minimal privacy interest in the information

requested by the subpoena ….”), and Malibu Media, LLC v. John Does 1-14, No. 12-CV-263,

2012 WL 6115653, at *2 (N.D. Ind. Dec. 10, 2012) (same), with Third Degree Films, Inc. v.

Does 1-2010, No. 4:11 MC 2, 2011 WL 4759283, at *2 (N.D. Ind. Oct. 6, 2011) (“A Doe

defendant lacks standing to move to quash a subpoena on the ground of undue burden when the

subpoena is directed to the ISP rather than to him.”).



The Court need not decide the issue here, however, because even if Doe 15 has standing

to object to the subpoena, he has not demonstrated that its issuance will cause him undue burden.

In determining whether a subpoena imposes an undue burden, the Court must ask whether “the

burden of compliance with [the subpoena] would exceed the benefit of production of the material

sought by it.” Nw. Mem’l Hosp. v. Ashcroft, 362 F.3d 923, 927 (7th Cir. 2004). In this case,



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Malibu Media served several subpoenas, including the subpoena implicating Doe 15, to the

putative Defendants’ Internet Service Providers. Because Doe 15 is not the party directed to

respond to the subpoena and no action is required of him, he cannot maintain that the subpoena

creates an undue burden on him. See, e.g., Malibu Media, LLC v. John Does 1-14, No. 1:12-CV-

263, 2012 WL 6115653, at *2 (N.D. Ind. Dec. 10, 2012) (“[A]ny argument that this subpoena

imposes an undue burden on Doe No. 12 fails because, as courts have consistently recognized, a

subpoena directed at an ISP does not require the defendant to produce anything”); Sunlust

Pictures, 2012 WL 3717768, at *2 (“The subpoena does not impose an undue burden on Doe

because he is not the party directed to respond to it.); Hard Drive Productions, Inc. v. Does 1-48,

No. 11-962, 2012 WL 2196038, at *3 (N.D. Ill. June 14, 2012) (“[T]he subpoenas do not burden

[the anonymous defendant] because they do not require any action of [him].”); First Time

Videos, LLC v. Does 1-18, No. 4:11-cv-69-SEB-WGH, 2011 WL 4079177, at *1 (S.D. Ind. Sept.

13, 2011) (“[T]he issuance of a subpoena to the Internet Service Provider of putative defendants

does not create an undue burden on the putative defendants because they are not required to

produce anything.”); First Time Videos, LLC v. Does 1-500, 276 F.R.D. 241, 250 (N.D. Ill. 2011)

(Castillo, J.) (“The subpoena’s served on Doe Defendants’ ISPs do not subject the Doe

Defendant to an undue burden; if anyone may move to quash these subpoenas on the basis of an

undue burden, it is the ISPs themselves, as they are compelled to produce information under the

subpoena.”); Voltage Pictures, LLC v. Does 1-5,000, 818 F.Supp.2d 28, 36 (D.D.C. 2011)

(finding Doe defendant lacked standing to quash as subpoena on the ground of undue burden

when the subpoena is directed to the Internet Service Provider rather than to him because the

subpoena requires the Internet Service Provider, not the Doe Defendant, to produce information).

Doe 15’s Motion to Quash is therefore denied.



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III. Motion to Proceed Anonymously

Doe 15 also moves, in the event that is Motion to Quash is denied, to proceed

anonymously and for the entry of a protective order prohibiting the publication of his name

through the dispositive motion phase of this case. Doe 15 argues that allowing his identity to be

revealed publicly at this stage in the proceedings would enable Malibu Media to leverage Doe

15’s fear of being embarrassed (for being named a defendant in a case involving illegally

obtained pornography) to obtain settlement. Malibu Media has indicated to the Court that while

it opposes a blanket protective order prohibiting Malibu Media from receiving Doe 15’s identity,

it does not object to allowing Doe 15 to remain anonymous through the end of discovery.

However, even where a motion to proceed anonymously is unopposed, the court must make “an

independent determination of the appropriateness” of the plaintiff’s motion to conceal his name.

Doe v. City of Chicago, 360 F.3d 667, 669 (7th Cir. 2004) (finding error where district court

judge did not make an independent determination of the plaintiff’s unopposed motion to proceed

anonymously).

Courts have recognized that anonymous litigation may be permitted in “matters of a

sensitive and highly personal nature such as birth control, abortion, homosexuality or the welfare

rights of illegitimate children or abandoned families.” South Methodist Univ. Ass’n of Women

Law Students v. Wynne & Jaffe, 599 F.2d 707, 712–13 (5th Cir. 1979). In this specific context,

this Court is not the first to recognize that claims against mass defendants and motions to

discover defendants’ identities may be used to shame defendants into settlement agreements

where they may otherwise have a meritorious defense. See Sunlust Pictures, 2012 WL 3717768,

at *5 (“Judges within this district have recognized that plaintiffs in these types of cases might

unfairly threaten to disclose defendants’ identities in order to improperly leverage settlement



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negotiations.”) (citing Hard Drive Productions, 2012 WL 2196038, at *6. Another court has

described the “common arc” of plaintiffs’ litigating tactics in such cases:

(1) a plaintiff sues anywhere from a few to thousands of Doe defendants for
copyright infringement in one action; (2) the plaintiff seeks leave to take early
discovery; (3) once the plaintiff obtains the identities of the IP subscribers through
early discovery, it serves the subscribers with a settlement demand; (4) the
subscribers, often embarrassed about the prospect of being named in a suit
involving pornographic movies, settle. Thus, these mass copyright infringement
cases have emerged as a strong tool for leveraging settlements–a tool whose
efficiency is largely derived from the plaintiffs’ success in avoiding the filing fees
for multiple suits and gaining early access en masse to the identities of alleged
infringers.


MCGIP, LLC v. Does 1-149, No. 11 C 2331, 2011 WL 4352110, at *4 n. 5 (N.D. Cal. Sep. 16,

2011).



On the other hand, the fact that suits of this nature settle quickly does not mean there is

any wrongdoing on the part of copyright owners. See Patrick Collins, Inc. v. John Does 1-9, No.

12-CV-3161, 2012 WL 4321718, at *5 (C.D. Ill. Sep. 18, 2012). It would be unfair to deprive

owners of copyrights to pornographic material the same protections as owners of other

copyrighted work. See id; Malibu Media, LLC v. John Does 1-14, No. 12-CV-263, 2012 WL

6019259 (N.D. Ind. 2012) (finding that “the potential for embarrassment ... does not outweigh

Plaintiff’s statutory right to protect its property interest in its copyright”). Court must also

consider the harm to the public interest in allowing Doe 15 to remain anonymous. See Doe v.

Smith, 429 F.3d 706, 710 (7th Cir. 2005) (“The public has an interest in knowing what the

judicial system is doing, an interest frustrated when any part of litigation is conducted in secret.”)



In this case, the harm to the public interest is minimal. Doe 15 does not request that the

case move forward under seal, nor does he move for a blanket protective order barring disclosure

of his identity for the duration of this litigation. Instead, Doe 15 asks that he be permitted to



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proceed under a pseudonym through the filing of dispositive motions in this case. This is

especially appropriate where, as here, there is an increasing amount of uncertainty as to whether

the IP address identified by Malibu Media’s investigators actually reflects activity performed by

the subscriber to that address. See, e.g., Digital Sin v. Does 1-176, 279 F.R.D. 239, 242

(S.D.N.Y. 2012) (issuing protective order requiring that any information regarding Doe

defendants be treated as confidential after expressing “concern[] about the possibility that many

of the names and addresses produced in response to Plaintiff’s discovery request will not in fact

be those individuals who downloaded [copyrighted pornography]”); see also In re BitTorrent

Adult Film Copyright Infringement Cases, No. 11-3995, 2012 WL 1570765, *3 (E.D.N.Y. May

1, 2012) (recognizing that due to the wide use of wireless routers, “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

time”). Furthermore, unlike cases where courts have disapproved of allowing a party to proceed

anonymously, see Doe v. City of Chicago, 360 F.3d at 669; Doe v. Blue Cross & Blue Shield

United States of Wisconsin, 112 F.3d 869, 872 (7th Cir. 1997), it is the Defendant in this case

who seeks the Court’s leave to proceed anonymously, not the plaintiff. Under such

circumstances, the Court is less concerned about parties seeking access to federal courts without

revealing their identity. See Sunlust Pictures, 2012 WL 3717768, at *6 (allowing Doe defendant

who allegedly downloaded pornography illegally using BitTorrent to proceed anonymously,

noting that “because Doe (as a defendant) has not purposely availed himself of the courts, the

public’s interest in knowing his identity is weaker”). Additionally, while Malibu Media does not

express its view toward allowing Doe 15 to proceed anonymously through the dispositive motion

phase of these proceedings, it does not object to allowing Doe 15 to remain anonymous through



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the end of discovery. Lastly, Malibu Media will not be unfairly prejudiced because it will know

Doe 15's true identity and will be able to investigate whether its claims have merit. The only

consequence for Malibu Media is that it will be deprived the leverage to force Doe 15 into

settlement by publicly disclosing his identity.



Upon balancing the potential embarrassment to Doe 15 and the possibility that Malibu

Media could use inappropriate litigation tactics to “coerce” a settlement, against the public’s

interest in knowing Doe 15's true identity and the risk of unfair prejudice to Malibu Media, the

Court finds that allowing Doe to proceed by pseudonym is, at least at this stage of the

proceedings, appropriate. The Court may revisit this issue if Malibu Media’s claims survive

dispositive motions.





IV. Motion to Sever for Improper Joinder

Doe 15 also moves to be severed from this case, arguing that he was improperly joined as

a defendant because Malibu Media’s allegations against him involve acts that are unrelated to the

allegations against the other defendants in this case. A plaintiff may join two or more defendants

in a single action under Federal Rule of Civil Procedure 20 if two independent requirements are

satisfied: (1) the claims against the defendants must be asserted “with respect to or arising out of

the same transaction, occurrence, or series of transactions or occurrences,” and (2) there must be

a “question of law or fact common to all defendants.” See Fed.R.Civ.P. 20(a)(2). The purpose of

the rule is “to promote trial convenience and to expedite the resolution of disputes, thereby

preventing multiple lawsuits,” 7 Charles A. Wright, Arthur R. Miller & Mary K. Kane, Federal

Practice & Procedure § 1652. “[T]he impulse is toward entertaining the broadest possible scope

of action consistent with fairness to the parties; joinder of claims, parties, parties and remedies is

strongly encouraged.” United Mine Workers of Am. v. Gibbs, 383 U.S. 715, 724 (1966).



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Although “transaction or occurrence” is not defined in Rule 20(a), courts interpret the term as

“comprehend[ing] a series of many occurrences, depending not so much upon the immediateness

of their connection as upon their logical relationship.” Lozada v. City of Chicago, No. 10 C 1019,

2010 WL 3487952 at *2 (N.D. Ill. Aug. 30, 2010) (Aspen, J.) (quoting Mosley v. Gen. Motors

Corp., 497 F.2d 1330, 1333 (8th Cir. 1974) (“[A]ll ‘logically related’ events entitling a person to

institute a legal action against another generally are regarded as comprising a transaction or

occurrence.”)); see also Dean v. City of Chicago, No. 09 C 1190, 2009 WL 2848865, at *2 (N.D.

Ill. Aug. 31, 2009) (Kennelly, J.) (also citing Mosley). In addition to the requirements of Rule

20, the Court may also consider “other relevant factors in a case in order to determine whether

the permissive joinder of a party will comport with the principles of fundamental fairness.”

Chavez v. Illinois State Police, 251 F.3d 612, 632 (7th Cir. 2001) (quoting Desert Empore Bank

v. Ins. Co. of N. Am., 623 F.2d 1371, 1375 (9th Cir. 1980)). For example, courts may consider

“factors such as the motives of the party seeking joinder and whether joinder would confuse and

complicate the issues for the parties involved.” See SBO Pictures, Inc. v. Does 1-57, No. 12-22,

2012 WL 1415523, at *2 (D.Md. Apr. 20, 2012). This Court has wide discretion in deciding

whether to sever a party for improper joinder. See Chavez, 251 F.3d at 632 (citing Intercon

Research Associates, Ltd. v. Dresser Indus., Inc., 696 F.2d 53, 56 (7th Cir. 1982)).



In copyright infringement cases involving peer-to-peer file-sharing systems that predate

the BitTorrent protocol, numerous courts have found that “the alleged use of the same peer-to-

peer network by a group of Doe defendants to commit copyright infringement is insufficient to

sustain the permissive joinder.” Hard Drive Prods., Inc v. Does 1-188, 809 F.Supp.2d 1150,

1156–59, 2011 WL 3740473, at *7–9 (N.D. Cal. Aug. 23, 2011) (analyzing pre-BitTorrent peer-

to-peer case law); see also IO Group, Inc. v. Does 1-19, No. C 10-03851 SI, 2010 WL 5071605,



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at *3 (N.D. Cal. Dec. 7, 2010) (collecting pre-BitTorrent case law). However, as explained

above, the architecture of the BitTorrent file sharing system necessitates a degree of cooperation

that did not exist in older incarnations of peer-to-peer file-sharing networks. Here, Malibu

Media relies on the BitTorrent protocol’s unique design to support its position that joinder is

proper, arguing that by joining the same swarm to download a copy of the Works, the

Defendants engaged in copyright infringement through a common series of transactions.



Due to the recent proliferation suits involving the BitTorrent protocol, courts across the

country have been asked to consider whether downloading and uploading pieces of the exact

same digital copy of a work through the BitTorrent protocol means that the defendants’ actions

are transactionally-related for the purposes of Rule 20(a)(2). See SBO Pictures, 2012 WL

1415523, at *2 (collecting cases). These courts have recognized that because a BitTorrent

swarm forms around a specific copy of a file and not the copyrighted work itself, a plaintiff

bringing a copyright infringement suit based on the alleged illegal use of BitTorrent must allege

not only that the defendants downloaded the same copyrighted work, but that they did so by

participating in the same BitTorrent swarm. See, e.g., Hard Drive Prods. v. Does 1-53, No. C-11-

2330 EDL, 2011 WL 2837399, at *1 (N.D. Cal. July 14, 2011) (“Since a swarm develops around

an originally seeded file, it appears that two or more different files of the same copyrighted work

could potentially seed two or more different swarms.”); Pacific Cent. Intern. Ltd. v. Does 1-101,

No. C-11-02533 (DMR), 2011 WL 2690142, at *3 (N.D. Cal. July 8, 2011) (“BitTorrent users

may upload different initial files of a given work, which results in the creation of distinct

swarms.”).



The issue before the Court in this case, however, takes the inquiry a step further. Here,

the Court is asked to determine whether anonymous participation in the same BitTorrent swarm,



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without a showing that the Defendants accessed the swarm at the same time, is sufficient to

allow for joinder under Rule 20(a)(2). To date, no Circuit Court of Appeals has addressed the

issue. A number of district courts – within this District and across the country – have been faced

with this question and reached different conclusions. See Pacific Century Int’l v. Does 1-31, No.

11-9064, 2012 WL 2129003, at *2 (N.D. Ill. June 12, 2012) (recognizing a split of authority and

collecting cases). On the one hand, the BitTorrent protocol, by virtue of its design, entails a

degree of cooperative activity that did not exist in previous peer-to-peer file-sharing systems.

Relying on BitTorrent’s architecture, some courts have concluded that Doe defendants’

infringing activities arise from the same series of transactions or occurrences if the illegally

downloaded torrent file’s unique hash identifier links each Doe defendant to the same Initial

Seed and swarm. See, e.g., Digital Sin, Inc. v. Does 1-176, 279 F.R.D. 239, 244, at *5 (S.D.N.Y.

2012) (“[I]t is difficult to see how the sharing and downloading … as a part of a chain or

‘swarm’ of connectivity designed to illegally copy and share the exact same copyrighted file ...

could not constitute a ‘series of transactions or occurrences’ for the purposes of Rule 20(a).”);

Pacific Century Int’l v. Does 1-31, 2012 WL 2129003, at *2 (N.D. Ill. June 12, 2012)

(Leinenweber, J.) (joinder appropriate where plaintiff alleged that various “anonymous

defendants participated in the same swarm (at varying times spanning just over one month)”);

Patrick Collins, Inc. v. John Does 1-21, 282 F.R.D. 161, 168–169 (E.D. Mich. 2012) (holding

that “the law of joinder does not have as a precondition that there be temporal distance or

temporal overlap; it is enough that the alleged BitTorrent infringers participated in the same

series of uploads and downloads in the same swarm,” adding that “the technology underlying

BitTorrent [makes] it different from other file sharing methods, for joinder purposes”); First

Videos, LLC v. Does 1-76, 276 F.R.D. 254, 257 (N.D. Ill. 2011) (Castillo, J.) (the fact that “the



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downloading is alleged to have taken place over the space of more than a month ... do[es] not

make joinder inappropriate” considering “[t]he nature of the BitTorrent distribution protocol

necessitates a concerted action by many people in order to disseminate files ....”); Hard Drive

Prods., Inc. v. Does 1-55, No. 11 C 2798, 2011 WL 4889094, at *5 (N.D. Ill. Oct. 12, 2011)

(Darrah, J.) (plaintiff’s allegation that Doe defendants infringed its copyrights “through

BitTorrent—the nature of which necessitates a concerted action by many people in order to

disseminate files—is sufficient to satisfy Rule 20(a)”).



Other courts have determined that participation in a common swarm is a necessary, but

insufficient condition to support joinder under Rule 20(a). These courts have found joinder

improper absent a showing that the Doe defendants were present in the same swarm at the same

time. See, e.g., Sunlust Pictures, LLC v. Does 1-75, No. 12 C 1546, 2012 WL 3717768, at *4

(N.D. Ill. Aug. 27, 2012) (Tharp, J.) (finding joinder appropriate where plaintiff alleged that the

defendants participated in the swarm at the same time, and observing that “[t]he courts that have

denied joinder in the BitTorrent context have generally done so because the plaintiff failed to

allege that the defendants simultaneously participated in a single swarm or that the defendants

distributed files directly among themselves”); Digital Sins, Inc. v. Does 1-245, No. 11-8170,

2012 WL 1744838, *2 (S.D.N.Y. May 15, 2012) (finding joinder improper where complaint

“allege[d] that separate defendants shared access to a file containing a pornographic film in

separate and isolated incidents over the course of 59 days,” reasoning that such allegations

merely asserted that the defendants “committed the same type of violation in the same way” and

thus did not satisfy the requirements of permissive joiner) (internal quotations omitted); In re

BitTorrent Adult Film Copyright Infringement Cases, No. 11-3995, 2012 WL 1570765, *11

(E.D.N.Y. May 1, 2012) (finding that plaintiff’s assertion that defendants were acting in concert



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“rests on a thin reed” where the dates of downloading provided in plaintiff’s complaint were

weeks or months apart); SBO Pictures, Inc. v. Does 1-57, No. 12-22, 2012 WL 1415523, at *2

(D.Md. Apr. 20, 2012) (denying joinder where downloads and uploads occurred over a three-

month period, stating that “the better-reasoned decisions have held that where a plaintiff has not

plead that any defendant shared file pieces directly with one another, the first prong of

permissive joinder is not satisfied”); Cinetel Films, Inc. v. Does 1-1,052, No. JFM 8:11-cv-

02438, 2012 WL 1142272, at *6 (D.Md. Apr. 4, 2012) (stating that “even if the IP addresses at

issue in this motion all came from a single swarm, there is no evidence to suggest that each of the

addresses acted in concert with all the others” because “the alleged infringement was committed

by unrelated defendants, through independent actions, and at different times and locations,” and

adding that “[a] majority of courts have specifically held that the properties of BitTorrent are

insufficient to support joinder”); Third Degree Films, Inc. v. Does 1-131, 280 F.R.D. 493, 496-

97 (D.Ariz. 2012) (joinder of an entire swarm that lasted many months improper because some

participants may never overlap one another); Raw Films, Ltd. v. Does 1-32, No. 1:11-CV-2939-

TWT, 2011 WL 6840590, at *2 (N.D. Ga. Dec. 29, 2011) (Defendants not engaged in a common

series of transactions as required by Rule 20 where plaintiff’s complaint alleged that some Doe

defendants were in the swarm over four months apart, finding that “differing dates and times of

each Defendant’s alleged sharing do not allow for an inference that the Defendants were acting

in concert.”); Liberty Media Holdings, LLC v. BitTorrent Swarm, 277 F.R.D. 669, 671–72 (S.D.

Fla. 2011) (finding joinder improper after “[a] close examination of Defendants’ activity

reveal[ed] that Defendants, subject to one exception, used BitTorrent on different days and at

different times over a two-month period,” explaining that “[m]erely participating in a BitTorrent

swarm does not equate to participating in the same ‘transaction, occurrence, or series of



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transactions or occurrences’ ”); On The Cheap, LLC v. Does 1-5011, 280 F.R.D. 500, 502 (“Most

recent decisions on this issue have concluded that the use of the BitTorrent protocol does not

distinguish these cases from earlier rulings in P2P cases in which courts found that joining

multiple Doe defendants was improper since downloading the same file did not mean that each

of the defendants were engaged in the same transaction or occurrence.”); MCGIP, LLC v. Does

1-149, No. 11-2331, 2011 WL 4352110, at *3 (N.D. Cal. Sep. 16, 2011) (misjoinder where

plaintiff “failed to show that any of the 149 Doe defendants actually exchanged any piece of the

seed file with one another”); Hard Drive Products, Inc. v. Does 1-188, 809 F.Supp.2d 1150,

1164 (N.D. Cal. 2011) (misjoinder where plaintiff conceded that “while the Doe Defendants may

have participated in the same swarm, they may not have been physically present in the same

swarm on the exact same day and time”); Boy Racer, Inc. v. Does 1-60, No. 11-1738, 2011 WL

3652521, at *4 (N.D. Cal. Aug. 19, 2011) (severing defendants where “[p]laintiff [did] not plead

facts showing that any particular defendant illegally shared plaintiff’s work with any other

particular defendant”); CP Productions, Inc. v. Does 1-300, No. 10 C 6255, 2011 WL 737761, at

*1 n.2 (N.D. Ill. Feb. 24, 2011) (Shadur, J.) (“It would constitute a real stretch of the normal

meaning of language for [the plaintiff] to call Rule 20(a)(2)(A) into play as the asserted predicate

for lumping its separate asserted claims into a single lawsuit.”).



The latter line of cases reflects a more complete understanding of the mechanics of the

BitTorrent protocol. Despite its cooperative design, the BitTorrent protocol’s architecture alone

does not compel the conclusion that anonymous defendants who download copies of the same

file from the same swarm are engaged in a common transaction or series of transactions for the

purposes of Rule 20(a)(2). Where a swarm continues to exist for an extended period of time, it is

improbable that defendants entering a swarm weeks or months apart will actually exchange



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pieces of data. Furthermore, it is impossible for defendants who are not in a swarm

coextensively to exchange any pieces of a file. A recently published Note in the Michigan Law

Review explains by way of example:

[I]magine a swarm developed around a file seeded by A. On Day 1, B, C, and D
enter that swarm with A and help each other acquire the file by exchanging pieces
of the file with one another. Their exchange can fairly be called the same “series
of transactions” for the purposes of Rule 20. Now, after the exchange, assume all
four stay plugged into the swarm through Day 2, uploading pieces of the file to
any other users who enter into the swarm. On Day 3, B, C, and D disconnect.
The next day, E, F, and G enter the swarm with A. Since the swarm develops
around the file, E, F, and G are part of the same swarm that A, B, and C were in.
However, now the file exchange is occurring between A, E, F, and G. By
contrast, B, C, and D have no involvement with the second exchange because they
left the swarm. Given that B, C, and D were not and could not be sources for E,
F, and G, the former group’s acquisition of the file was a wholly separate series of
transactions from the latter’s. Instead, the only link between the parties is that
they used the same peer-to-peer network to copy and reproduce a plaintiff’s
video.


Sean B. Karunaratne, Note, The Case Against Combating BitTorrent Piracy Through Mass John

Doe Copyright Infringement Lawsuits, 111 Mich. L. Rev. 283, 295 (Nov. 2012); see also Third

Degree Films, 280 F.R.D. at 498 (finding joinder requirements not met based on “the fact that a

particular swarm, including the swarm at issue in this case, can last for many months. During

those months, the initial participants may never overlap with later participants”).



The Court recognizes that this example paints a relatively simplified picture of the

activity in a BitTorrent swarm, which in reality can involve thousands of users, dozens of seed

files, and span for several months. Nevertheless, the example is instructive here. Exhibit A to

Malibu Media’s Amended Complaint – a chart listing the John Doe Defendants, their IP

addresses, and “hit date” – indicates that the Defendants accessed the swarm at different dates

and times between June 9, 2012 and July 28, 2012. (Dkt. No. 24-1.) Doe 15, the movant in this

case, is alleged to have been part of the swarm on June 11, 2012 at 2:53 a.m. (Id.) He was



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preceded most recently in the swarm by Doe 4, who is alleged to have been present in the swarm

on June 9, 2012 and followed by Doe 8, who appears to have accessed the swarm on June 13,

2012.2 (Id.) It is undisputed that any pieces of the Works downloaded or uploaded by Doe 15

were derived from the same Initial Seed as the pieces downloaded by Does 4 and 8. There is no

indication, however, that Doe 4, or the Does that preceded him, remained in the swarm long

enough to exchange pieces of the Works with Doe 15. Nor has Malibu Media demonstrated that

Doe 15 remained in the swarm long enough to exchange data with Doe 8, or with Doe

Defendants who joined the swarm after Doe 8. If Doe 4 left the swarm after obtaining the file,

and Doe 15 did the same, Doe 15 would not have exchanged any data with either defendant

despite having obtained the same seed file from the same swarm. Therefore, even assuming that

Doe 15 was an actual infringer, entered the same swarm and downloaded the same seed file,

Malibu Media has failed to demonstrate Doe 15 exchanged any piece of the seed file with any

other defendant in this case.



The Court also recognizes that it has previously held in a similar case that disputes

related to joinder are premature at this stage of the proceedings. See MGCIP v. Does 1-316, No.

10 C 6677, 2011 WL 2292958, at *2 (N.D. Ill. June 9, 2011). While a case decided a mere

eighteen months ago might constitute “recent” case law in many other contexts, this particular

area of law and the federal judiciaries understanding of the implications of joinder in such cases

has developed significantly over the past eighteen months. This Court’s own research reveals

that prior to its decision in MGCIP, seven courts in this country had addressed whether it is

appropriate to allow joinder of defendants who participate in the same BitTorrent swarm. Since



2 The purpose here is to illustrate by way of example the tenuous connection between Doe defendants who
are joined in a suit by virtue of their presence in the same swarm. The Court recognizes that Does 4 and 8 have
since been voluntarily dismissed from this action.



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then, 186 district and magistrate courts have addressed the issue. Through scores of proceedings,

and with the help of undoubtedly thousands of pages of briefing on the issue, courts now have a

more complete understanding of the mechanics of the BitTorrent protocol and its implications

relating to joinder under Rule 20. Courts have also had the opportunity to witness the

development and lifecycle of dozens of BitTorrent proceedings and appreciate more fully the

complications that can arise as a result of mass joinder once such cases reach the more detailed

phase of discovery. As evidenced by the cases cited above, courts throughout the country – on

both sides of the swarm-joinder debate – are in agreement that it is not only appropriate, but

prudent to address the issue of joinder before litigation of this type is permitted to proceed to

further.



Malibu Media argues that because the Defendants here downloaded the same torrent file,

as evidenced by the file’s unique hash identifier, it can demonstrate “with mathematical

certainty” that the Defendants committed the infringing acts through the same transaction or

series of transactions. Relying on Patrick Collins, Inc. v. John Does 1-21, 282 F.R.D. 161, 168-

169 (E.D. Mich. 2012), Malibu Media submits there are only four possible ways Doe 15 could

have acquired the file: (1) the Defendants connected to and transferred a piece of the Works from

the initial seeder; (2) the Defendants connected to and transferred a piece of the Works from a

seeder who downloaded the completed file from the initial seeder or from other peers; (3) the

Defendant connected to and transferred a piece of the Works from other Defendants who

downloaded from the initial seeder or from other peers; or (4) the Defendant connected to and

transferred a piece of the Works from other peers who downloaded from other Defendants, other

peers, other seeders, or the initial seeder.





Even assuming these four possibilities compose the entire universe of ways in which a

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Doe defendant could obtain a copyrighted work from a particular swarm, it does not follow that

Doe defendants participating in the same swarm actually exchange any pieces of data with one

another. If Doe 15 connected to the swarm on June 11, 2012 and downloaded a piece of the

Works from other peers who downloaded from other Defendants, Doe 15 would have been

engaged in a series of transactions – downloads and uploads – with peers, other Defendants, and

seeders who were simultaneously present in the swarm. He could not fairly be said to have

engaged in a transaction or series of transactions with peers who entered the swarm and left days,

weeks, or months before his arrival. Furthermore, without showing that Doe 15 remained in the

swarm after his June 11 “hit date,” Malibu Media cannot maintain that Doe 15 acted in concert

with Defendants that arrived subsequently by contributing to the chain of data distribution. Once

a BitTorrent user disconnects from a swarm, any subsequent activity in that swarm is

independent of the activity that took place during his presence. Malibu Media points to no facts

alleging that the Doe Defendants who joined the swarm after Doe 15 obtained any pieces of the

file from Doe 15, or from another peer who obtained the file from Doe 15. The only

nonconjectural link between Defendants who access a swarm at different times is their mutual

reliance on the Initial Seeder’s upload of the file; they do not rely on each other, nor do they

necessarily pave the way for later participants to obtain the file. For example, had Doe 15 never

entered the swarm on June 11, 2012, the remaining Does would still have been able to download

the Works as alleged so long as s