Case 8:11-cv-01772-AW Document 18 Filed 11/08/11 Page 1 of 9
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
`SOUTHERN DIVISION
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`Civil Action No. 11-cv-01772-AW
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`PATRICK COLLINS, INC.,
`Plaintiff,
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`v.
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`DOES 1 – 22,
`Defendants.
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`Memorandum Opinion
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`Plaintiff Patrick Collins, Inc. filed this action against twenty-two John Doe defendants for
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`copyright infringement. Pending before the Court is John Doe #3’s Motion to Dismiss for Failure
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`to State a Claim or to Dismiss or Sever for Misjoinder and Motion to Quash the Subpoena. See
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`Doc. No. 13. The Court has reviewed the entire record, as well as the pleadings and exhibits, and
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`finds that no hearing is necessary. See Local Rule 105.6 (D. Md. 2010). For the reasons set forth
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`below, the Court denies Defendant’s motion.
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`I.
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`FACTUAL & PROCEDURAL BACKGROUND
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`On June 28, 2011, Plaintiff Patrick Collins, Inc. (“Collins”) filed this Complaint against
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`twenty-two John Doe Defendants alleging that Defendants used a file-sharing protocol called
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`BitTorrent to illegally infringe Plaintiff’s copyrights in the motion picture Cuties 2. Plaintiff
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`claims to know the Internet Protocol address (“IP address”) of each infringing defendant, but not
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`their real names, addresses, or other identifying information. The entity that possesses
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`information linking an IP address to real identifying information is the Internet Service Provider
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`Case 8:11-cv-01772-AW Document 18 Filed 11/08/11 Page 2 of 9
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`(“ISP”) for that IP address. ISPs, such as Comcast or Verizon, maintain temporary internal logs
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`that record the date, time, and customer identity for each IP address serviced by that ISP. On July
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`28, 2011, the Court granted Plaintiff’s Motion to Expedite Discovery prior to the Rule 26(f)
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`conference, enabling Plaintiff to conduct limited discovery on the ISPs that service the allegedly
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`infringing IP addresses so that Plaintiff can discover the identity of the defendants and serve
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`them with process. See Doc. No. 8.
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`Since the Court’s order permitting such discovery, the ISPs have provided their
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`subscribers with notice of the subpoena. As a result, a few of the putative John Doe Defendants
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`whose contact information have been subpoenaed have filed motions with the Court seeking to
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`dismiss the case for failure to state a claim or to dismiss or sever for misjoinder and to quash the
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`subpoena and prevent the ISPs from turning over their identifying information. See Doc. Nos. 9,
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`13. Specifically, the Doe Defendants contends that: (1) Plaintiff cannot make out a copyright
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`infringement claim because Plaintiff does not have a formal copyright registration as required
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`under 17 U.S.C. § 411(a); (2) Defendants are not properly joined under Federal Rule of Civil
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`Procedure 21; and (3) the subpoena burdens and harasses Doe Defendants and should be quashed
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`pursuant to Federal Rule of Civil Procedure 45(c)(3)(A)(iv); and (4) the subpoena violates the
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`Electronic Privacy Communication Act, codified at 18 U.S.C. §§ 2701-2703 and should be
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`quashed on that basis. Although one of these motions was mooted after Plaintiff dismissed the
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`movant John Doe, see Doc. No. 11, the Court is currently considering such a motion by John
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`Doe #3. For the reasons stated below, the Court denies John Doe #3’s motion.
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`III. ANALYSIS
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`A.
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`Motion to Dismiss for Failure to State a Claim for Copyright Infringement
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`2
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`Case 8:11-cv-01772-AW Document 18 Filed 11/08/11 Page 3 of 9
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`As an initial matter, Doe Defendant #3 argues that Plaintiff cannot make out a copyright
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`infringement claim because Plaintiff does not have a formal copyright registration as required
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`under 17 U.S.C. § 411(a), and Plaintiff’s claim should thus be dismissed pursuant to Federal
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`Rule 12(b)(6). The purpose of a motion to dismiss under Rule 12(b)(6) is “to test the sufficiency
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`of [the] complaint.” Edwards v. City of Goldsboro, 178 F.3d 231, 243 (4th Cir. 1999). Except in
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`certain specified cases, the complaint need only satisfy the “simplified pleading standard” of
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`Rule 8(a), Swierkiewicz v. Sorema N.A., 534 U.S. 506, 513 (2002), which requires a “short and
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`plain statement of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2).
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`A plaintiff must plead “enough facts to state a claim to relief that is plausible on its face.” Bell
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`Atlantic Corp. v. Twombly, 550 U.S. 544, 547 (2007).
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`In order for Plaintiff to state a copyright infringement claim, Plaintiff must show: “(1)
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`ownership of a valid copyright, and (2) copying of constituent elements of the work that are
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`original.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). Although
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`Plaintiff has filed a United States Copyright Registration Application for its motion picture
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`Cuties 2, the copyright is still pending registration. In a 2005 case, this Court found that “the
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`plain language of the Copyright Act … requires registration of a copyright or denial of same as
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`jurisdictional prerequisites to instituting an action for copyright infringement.” Mays & Assocs.
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`v. Euler, 370 F. Supp. 2d 362, 370 (D. Md. 2005).
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`However, the Supreme Court has more recently held that registration of a copyright is not
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`necessary to bring a copyright infringement claim in federal court. See Reed Elsevier, Inc. v.
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`Muchnick, 130 S.Ct. 1237, 1246 (2010) (“Federal district courts have subject-matter jurisdiction
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`over copyright infringement actions based on 28 U.S.C. §§ 1331 and 1338. But neither § 1331,
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`which confers subject-matter jurisdiction over questions of federal law, nor § 1338(a), which is
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`Case 8:11-cv-01772-AW Document 18 Filed 11/08/11 Page 4 of 9
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`specific to copyright claims, conditions its jurisdictional grant on whether copyright holders have
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`registered their works before suing for infringement.”). Subsequently, at least one court in the
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`Fourth Circuit considering the impact of this decision has found that it has subject matter
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`jurisdiction over a plaintiff’s copyright infringement claims for both registered and unregistered
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`images. See Tattoo Art, Inc. v. TAT Int’l, LLC, Civ. No. 2:10cv323, 2011 WL 2585376, at *11
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`(E.D. Va. June 29, 2011). Accordingly, the Court finds that Plaintiff has adequately stated a
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`claim for copyright infringement even though its copyright registration is still pending.
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`B.
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`Motion to Dismiss or Sever for Misjoinder
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`Additionally, Doe #3 argues that Defendants are not properly joined under Federal Rule
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`of Civil Procedure 21 and should accordingly be dismissed or severed from the instant action. As
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`an initial matter, the Court notes that there is a wealth of case law in other federal district courts
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`supporting joinder in similar cases. See, e.g., Call of the Wild Movie, LLC v. Does 1-1062, 770 F.
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`Supp. 2d 332, 342-32 (D.D.C. 2011) (finding joinder proper in a similar case involving over
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`1,000 Doe Defendants); Donkeyball Movie, LLC v. Does 1-171, Civ. No. 10-1520(BAH), 2011
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`WL 1807452, at *4-*5 (D.D.C. May 12, 2011) (same); West Coast Prod., Inc. v. Does 1-5829,
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`Civ. No. 11-57(CKK), 2011 WL 2292239, at *5-*6 (D.D.C. Jun. 10, 2011) (same).
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`However, courts have also found joinder inappropriate in similar cases. See Pac. Century
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`Int’l, Ltd. v. Does 1-101, No. C 11-02533 DMR, 2011 WL 2690142 (N.D. Cal. Jul 8, 2011)
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`(severing all defendants but one due to lack of evidence that defendants were part of the same
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`“swarm” in uploading the same initial files of a given work); see also Patrick Collins v. Does 1-
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`58, No. 3:11-cv-531(JAG) (E.D. Va. Oct. 13, 2011) (Doc. No. 17 Ex. 1) (“The mere allegation
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`that the defendants have used the same peer-to-peer network to copy and reproduce the Work—
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`Case 8:11-cv-01772-AW Document 18 Filed 11/08/11 Page 5 of 9
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`which occurred on different days and times over a span of two months—is insufficient to meet
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`the standards to joinder set forth in Rule 20.”).
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`Permissive joinder is governed by Federal Rule of Civil Procedure 20, which provides
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`that:
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`Persons … may be joined in one action as defendants if: (A) any right to relief
`is asserted against them jointly, severally, or in the alternative with respect to
`or arising out of the same transaction, occurrence, or series of transactions or
`occurrences; and (B) any question of law or fact common to all defendants will
`arise in the action.
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`Fed. R. Civ. P. 20(a)(2). Many courts have determined that all “logically related” events
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`underlying a legal cause of action are generally considered as comprising a transaction or
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`occurrence. See, e.g., Mosley v. Gen. Motors Corp., 497 F.2d 1330, 1333 (8th Cir. 1974). The
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`Court may sever improperly joined parties at any time, as long as the severance is on just terms
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`and the entire action is not dismissed outright. Fed. R. Civ. P. 21. However, “the impulse is
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`toward the broadest possible scope of action consistent with fairness to the parties and joinder of
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`claims, parties and remedies is strongly encouraged.” United Mine Workers of Am. v. Gibbs, 383
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`U.S. 715, 724 (1966). Considering the two requirements for permissive joinder under Federal
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`Rule 20(a)(2) as they apply to the instant action, the Court finds that at this procedural juncture,
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`joinder of the putative Defendants is proper.
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`The first requirement of permissive joinder is that claims “aris[e] out of the same
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`transaction, occurrence, or series of transactions or occurrences.” Fed. R. Civ. P. 20(a)(2)(A).
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`Doe #3 argues that Plaintiff is attempting to join numerous individuals without alleging any
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`coordinated action between the Defendants or any right to relief that arises out of the same
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`transaction. Additionally, Doe #3 argues that there is no alleged or implied relationship between
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`Case 8:11-cv-01772-AW Document 18 Filed 11/08/11 Page 6 of 9
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`the Doe Defendants and that the Complaint contains no allegation that any two Defendants acted
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`in concert or otherwise conspired against Plaintiff.
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`These contentions largely ignore the allegations in the Complaint. Plaintiff alleges that
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`each Defendant peer member participated in the same “swarm” of BitTorrent users that illegally
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`uploaded and downloaded Plaintiff’s copyrighted movie. See Compl. ¶ 33. Additionally, Plaintiff
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`alleges that each Defendant directly interacted and communicated with other members of that
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`swarm through digital handshakes, the passing along of computer instructions, and by other
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`types of transmissions. Id. Plaintiff further alleges that once a Defendant has downloaded the full
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`copyrighted work, the Defendant becomes known as an “additional seed” and continues to
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`distribute the torrent file containing the copyrighted work. Id. ¶ 35. Finally, Plaintiff contends
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`that it has only sued Defendants in the exact same swarm, i.e., Defendants who participated in
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`downloading or transmitting the same unique version of Plaintiff’s movie. Plaintiff explains that
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`such identification is possible through the use of forensic software which identifies the Doe
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`Defendants’ IP Addresses as having a unique cryptographic “Hash Number” which serves as a
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`digital footprint. See id. ¶ 38.
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`Doe #3 points out that this swarm involved possibly thousands of other online users from
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`across the country. Even though Plaintiff is suing only a small portion of the swarm, the Court
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`finds that Plaintiff has sufficiently alleged that the putative Defendants used the same file-
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`sharing device at around the same time to copy the same version of Plaintiff’s movie.
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`Additionally, Plaintiff has sufficiently alleged not only that each Doe played a role in the
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`collaborative effort of distributing Plaintiff’s movie, but that each of the twenty-two Defendants
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`may have directly facilitated the download of Plaintiff’s movie by another of the twenty-two
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`Defendants. See Call of the Wild Movie, 770 F. Supp. 2d 332, 343 (D.D.C. 2011) (finding joinder
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`Case 8:11-cv-01772-AW Document 18 Filed 11/08/11 Page 7 of 9
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`proper where “[e]ach putative defendant is a possible source for the plaintiffs’ motion pictures,
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`and may be responsible for distributing the motion pictures to other putative defendants”).
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`Although Defendants may be able to rebut these allegations once the Court becomes aware of
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`their identities and individual defenses, at this stage Plaintiffs have adequately satisfied the first
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`prong of permissive joinder.
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`The second prong of the permissive joinder test, Federal Rule 20(a)(2)(B), requires
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`Plaintiff’s claims against Defendants to contain common questions of law or fact. Plaintiff meets
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`this requirement in the instant action because it asserts identical claims against the Doe
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`Defendants. Although Defendants will necessarily present different factual issues and legal
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`defenses at a later stage in the litigation, the commonality of legal claims at this time supports
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`joinder. Additionally, the interests of judicial efficiency also weigh in favor of joining these
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`claims, and doing so may be more beneficial for the Doe Defendants. See London-Sire Records,
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`Inc. v. Doe 1, 542 F. Supp. 2d 153, 161 (D. Mass. 2008) (finding that consolidating a group of
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`similar cases “ensures administrative efficiency for the Court, the plaintiffs, and the ISP, and
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`allows the defendants to see the defenses, if any, that other John Does have raised.”). Moreover,
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`joinder serves Plaintiff’s interests by providing it with an effective tool to protect its motion
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`picture from copyright infringement. Accordingly, the Court finds that joinder is proper and
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`accordingly declines to sever or dismiss Doe #3 on that basis.
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`C.
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`Motion to Quash Subpoenas
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`Finally, Doe #3 has filed a motion to quash the subpoena issued to the ISP seeking
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`information about the Doe Defendants. Doe #3 contends that the subpoena burdens and harasses
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`Doe Defendants and should be quashed pursuant to Federal Rule of Civil Procedure
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`Case 8:11-cv-01772-AW Document 18 Filed 11/08/11 Page 8 of 9
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`45(c)(3)(A)(iv). Federal Rule 45 provides that pursuant to a timely motion, the issuing court
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`must quash or modify a subpoena that, inter alia, “subjects a person to undue burden.” In the
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`instant action, the Court permitted Plaintiff to serve subpoenas on ISPs so that Plaintiff may
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`identify the Doe Defendants responsible for the alleged infringement. Such identification is
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`necessary so that Plaintiff may pursue these actions and enforce its legal rights to distribute
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`Cuties 2 by obtaining a remedy against infringers. Doe #3’s argument that the subpoena presents
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`an undue burden is unavailing because the subpoena is directed toward the ISPs and not the Doe
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`Defendants and accordingly does not require Doe #3 to produce any information or otherwise
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`respond. Therefore, the Court denies Doe #3’s motion to quash the subpoena on the basis that it
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`presents an undue burden to Defendants.
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`In addition, Doe #3 contends that Plaintiff’s subpoenas violate the Electronic
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`Communication Privacy Act (“ECPA”), 18 U.S.C. §§ 2701-2703 (West 2011). Specifically,
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`Defendant contends that the ECPA restricts the disclosure by an electronic communications
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`service of its customers’ records and the contents of their electronic communications. Defendant
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`presumably relies in part on section 2702(a)(1), which provides that “a person or entity providing
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`an electronic communication service to the public shall not knowingly divulge to any person or
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`entity the contents of a communication while in electronic storage by that service.” This
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`provision does not apply in the instant action, where Plaintiff seeks not the contents of a
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`communication in electronic storage but rather Defendants’ names, addresses, telephone
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`numbers, e-mail addresses, and Media Access Control addresses.
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`Additionally, Doe #3 presumably relies on section 2702(a)(3), which restricts the
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`disclosure of customer records. See 18 U.S.C. § 2702(a)(3) (West 2011). Doe #3 fails to consider
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`section 2702(c)(6), which provides an exception allowing an ISP to “divulge a record or other
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`Case 8:11-cv-01772-AW Document 18 Filed 11/08/11 Page 9 of 9
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`information pertaining to a subscriber … to any person other than a governmental entity.” Id. §
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`2702(c)(6). Because Plaintiff in the instant action is not a governmental entity, disclosure of the
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`information sought by Plaintiff pursuant to the subpoena is permitted by the ECPA. See First
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`Time Videos, LLC v. Does 1-500, No. 10 C 6254, 2011 WL 3498227, at *4 (N.D. Ill. Aug. 9,
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`2011) (finding under similar facts that the information subpoenaed to the plaintiff is permitted by
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`the ECPA and therefore not privileged). Accordingly, the Court denies Doe #3’s motion to quash
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`the subpoena on this ground.
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`IV. CONCLUSION
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`For the foregoing reasons, Defendant’s motion is denied. A separate order will follow.
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` /s/
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`Alexander Williams, Jr.
`United States District Judge
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`9
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`November 8, 2011
` Date