Well Go USA v. Uknown Filesharing Swarm

Court: United States District Court, Southern District Texas

Document status: Memorandum and Order Granting Rule 45 Discovery, Denying DMCA Subpoena

Issue or relevant point(s): Subject to the Article III power of the court, and particularly under a claim of copyright infringement, can a Plaintiff seek infringer identification information from a service provider under a Rule 45 and/or 512(h) subpoena?

Ruling:  The Court granted the Plaintiff’s motion for limited discovery of information related to persons believed involved in illegal peer-to-peer file sharing via a Rule 45 subpoena (subject to a protective order), but denied the same request under 17 U.S.C. § 512(h).

Background

BitTorrent is a peer-to-peer (“P2P”) file sharing protocol used for distributing and sharing data on the Internet.  BitTorrent technology allows sharing through a piecemeal process that allows a user to receive portions of a file from multiple users.  Once a “bit” of the file is downloaded by a user, the same ‘bit’ can now be re-shared by that same user.  Any ‘peer’ who has a common BitTorrent file on his/her computer may be referred to as a ‘swarm’ – identifiable by a unique hash tag.  A peer will continue to share (distribute) the file(s) until there is a manual disconnect from the BitTorrent system.

Here Plaintiff knew a limited amount of information related to a grouping of peers using the system during an approximate two-month range, including IP address and specific ISP; however, the Plaintiff lacked specific names.

The Plaintiff requested leave of the court to discover (via Rule 45 subpoena or DMCA subpoena) each defendant’s name, address, telephone no., and email address.

Analysis Summary

The Court first reviewed the legal doctrine for issuing a Rule 45 subpoena for identifying information of users, which includes weighing several factors to balance need for disclosure versus First Amendment interests.  These factors include:

1) A concrete showing of a prima facie claim of actionable harm;

2) Specificity of the request;

3) Absence of alternative means to obtain the subpoenaed information;

4) Central need for the information to advance the claim; and

5) User’s expectation of privacy.

In its pleading the Plaintiff asserted, except for specific named individuals, a prima facie claim of copyright infringement (i.e., ownership of a valid copyright, and copying), satisfying factors 1 and 2.  The Court also found factors 3 and 4 satisfied given that Plaintiff had discovered as much information as it could, and could take its claims no further without specific identification information.  Or, put another way, that without the requested information, the Plaintiff would be unable to properly serve the eventual defendant(s).

The Court was satisfied with Factor 5 so long as the Rule 45 subpoena was subject to a protective order (under Rule 26(c)(1)) that would keep the information private during a period of time where the purported defendant could object or respond to the subpoena.

The Court next considered Plaintiff’s alternative request for a DMCA subpoena to issue under §512(h) of the DMCA.  In its review, the Court made reference to precedence from Recording Ind. Ass'n of Am. v. Verizon Internet Servs., Inc., which had evaluated the application of § 512(h) to a case that involved a safe harbor function subject to § 512(a).[1]  The Court recognized Verizon as non-binding, but viewed the statutory analysis as persuasive.  Because the Plaintiff did not identify the named ISP’s as storing material (but instead were mere conduits) the Court felt discovery should occur through another mechanism, namely the granted Rule 45 subpoena.

Conclusion

Whether under Article III setting or not, a DMCA subpoena cannot be served on an ISP operating under § 512(a) safe harbor functionality.  If a Plaintiff wishes to obtain identification of an alleged infringer (using P2P technology), it must first file a complaint to initiate a lawsuit, and then seek discovery under Rule 45.  Before the subpoena is granted in an Article III setting, the Court will weigh various Factors to balance the need for disclosure versus First Amendment interests.