Case 2:07-cv-00187-PLM Doc #27 Filed 02/22/08 Page 1 of 12 Page ID#276
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`LAFACE RECORDS, LLC, a Delaware limited
`liability company; ATLANTIC RECORDING
`CORPORATION, a Delaware corporation;
`BMG MUSIC, a New York general partnership;
`CAPITOL RECORDS, INC., a Delaware
`corporation; ELEKTRA ENTERTAINMENT
`GROUP, INC., a Delaware corporation;
`INTERSCOPE RECORDS, a California general
`partnership; MAVERICK RECORDING
`COMPANY, a California joint venture;
`PRIORITY RECORDS, LLC, a California
`limited liability company; SONY BMG
`MUSIC ENTERTAINMENT, a Delaware
`general partnership; UMG RECORDINGS,
`INC., a Delaware corporation; and WARNER
`BROS. RECORDS, INC., a Delaware
`corporation,
`
`Plaintiffs,
`
`-v-
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`DOES 1 - 5,
`
`Defendants.
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`Case No. 2:07-cv-187
`
`HONORABLE PAUL L. MALONEY
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`OPINION AND ORDER DENYING DEFENDANT DOE #4'S MOTION TO DISMISS
`COMPLAINT, VACATE DISCOVERY ORDER AND QUASH SUBPOENA ISSUED TO
`NON-PARTY NMU
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`This Court has before it Doe #4's Motion to Dismiss Complaint, Vacate Discovery Order and
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`Quash Subpoena Issued to Non-Party NMU (Dkt. No. 16).
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`Plaintiffs, various members of the music recording industry, filed a complaint against five
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`unknown individuals for infringement under the copyright laws of the United States, 17 U.S.C. §
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`101 et seq. With the complaint, Plaintiffs filed an application for leave to take immediate discovery
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`under Federal Rules of Civil Procedure 26 and 45. On September 27, 2007, this Court granted
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`Plaintiffs’ application and issued an order, under Rule 45, allowing Plaintiffs to subpoena
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`Case 2:07-cv-00187-PLM Doc #27 Filed 02/22/08 Page 2 of 12 Page ID#277
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`information from Northern Michigan University (NMU) in order to identify Defendants. The order
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`required NMU to notify the individuals of the subpoena and allowed those individuals to file a
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`motion to quash the subpoena before the return date of the subpoena, November 7, 2007.
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`Two of the five Does have sought to quash the subpoena.1 Doe #4 filed the motion now
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`before this Court on November 15, 2007.2 Having read the briefs, this Court finds oral argument
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`unnecessary to resolve the questions of law presented.
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`I. BACKGROUND
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`A. Complaint. Plaintiffs allege Defendant Does used peer-to-peer (P2P) on-line file sharing
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`systems to distribute or download Plaintiffs’ copyrighted music. Plaintiffs allege each Doe has,
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`through these P2P websites, downloaded (copied) and distributed (uploaded) copyrighted audio
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`files. Because Defendants do not identify themselves on-line, Plaintiffs’ agents download music
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`from the files made available by Defendants in order to capture the internet protocol (IP) addresses
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`for the computer where the files are located. IP addresses are unique to specific computers and are
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`assigned to a computer by the internet service provider (ISP). Plaintiffs use the IP addresses to
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`identify the ISP. Plaintiffs then filed suit against the unknown Defendants and requested a subpoena
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`which would force the ISP, in this case Northern Michigan University, to identify the computer to
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`which the IP address was assigned. By identifying the personal computer used to make the
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`copyrighted audio files available, Plaintiffs can learn the name of the person who owns the computer
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`1The other three Does have since been dismissed from the action voluntarily, without
`prejudice.
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`2On November 2, 2007, Doe #4 filed a motion requesting additional time to file a motion
`to quash the subpoena and to have the subpoenaed information filed under seal to this Court.
`The motion was granted.
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`2
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`or has been assigned the computer.
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`B. Subpoena. In the September 9, 2007 opinion and order granting Plaintiffs’ request for
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`expedited discovery, this Court found Plaintiffs had established good cause to conduct discovery
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`prior to a Rule 26 hearing and authorized a subpoena under Rule 45. This Court found Plaintiffs
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`established good cause because they had (1) alleged a prima facia case of copyright infringement,
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`(2) alleged that the ISP typically retains activity logs for only a limited period of time, (3) made a
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`narrowly tailored request for information and (4) demonstrated the information was necessary to
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`advance the litigation. Doe #4 now seeks to quash the subpoena and dismiss the action.
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`II. ANALYSIS
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`Although the federal courts generally dislike suits filed against an unknown defendant, court
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`have permitted such suits where the identity of the defendant could be ascertained through limited
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`discovery. See Wakefield v. Thompson, 177 F.3d 1160, 1163 (9th Cir. 1999) (approving of the
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`naming of a Doe defendant unless it was clear that discovery would not reveal the defendant’s
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`identity or if the case would be dismissed on other grounds); Munz v. Parr, 758 F.2d 1254, 1257 (8th
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`Cir. 1985) (holding dismissal was improper when the Doe defendant was capable of being
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`identified); Schiff v. Kennedy, 691 F.2d 196, 197-198 (4th Cir. 1982) (holding the district court erred
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`by dismissing the case because the Doe defendant was a real person who could be identified through
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`discovery); Maclin v. Paulson, 627 F.2d 83, 87 (7th Cir. 1980) (holding the use of fictitious names
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`for defendants has become routine and that the complaint should not have been dismissed because
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`the court could have ordered the identities of the unknown parties be provided or allowed plaintiff
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`the opportunity for discovery). The Sixth Circuit Court of Appeals has not addressed this issue in
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`any published opinion, but did reach the same conclusion in an unpublished case. Yates v. Young,
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`3
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`Case 2:07-cv-00187-PLM Doc #27 Filed 02/22/08 Page 4 of 12 Page ID#279
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`84-5586 and 85-5701, 1985 WL 13614 (6th Cir. 1985) (unpublished table opinion) (“Although the
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`designation of a ‘John Doe” defendant is not favored in the federal courts, it is permissible when the
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`identity of the alleged defendant is not known at the time the complaint is filed and plaintiff could
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`identify defendant through discovery.”).
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`Doe #4's motion requests this Court (1) dismiss the case for failure to serve advance notice
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`of copyright infringement, (2) vacate expedited discovery order for the same reason and because the
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`claim for infringement is improperly filed, and (3) quash the subpoena because it seeks protected
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`information. Defendant does not specifically address the reasons contained in Rule 45 which
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`authorizes a court to quash or modify a subpoena.3 Defendant does not analyze the complaint under
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`any of the provisions of Rule 12(b). Nevertheless, this Court will endeavor to determine if any of
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`the arguments contained in Defendant’s motion offers a valid reason to quash the subpoena or
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`dismiss the complaint.
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`A. Motion to Quash
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`Rule 45 authorizes a court to quash or modify a subpoena if the subpoena (1) does not allow
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`a reasonable time for compliance, (2) requires a person who is not a party to the action to travel
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`more than 100 miles, (3) requires disclosure of privileged or other protected matter and no exception
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`or waiver applies, or (4) subjects a person to undue burden. FED. R. CIV. P. 45(c)(3)(A)(i-iv).
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`Doe #4 offers three arguments in support of his/her motion. First, Doe #4 argues the order
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`should be set aside and the complaint dismissed because Plaintiffs failed to provide advance notice
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`of copyright infringement under 37 C.F.R. § 201.22. This argument does not fall within any of the
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`3This Court unaware of any other authority which authorizes vacating the discovery order
`(as opposed to quashing the subpoena).
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`4
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`four reasons for a court to quash a subpoena under Rule 45.
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`Second, Doe #4 argues the order granting the Rule 45 subpoena should be set aside because
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`Plaintiffs misrepresented the authority for granting the subpoena. Doe #4 advances two sub-
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`arguments here. Doe #4 argues the Digital Millennium Copyright Act (DMCA) provides the sole
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`authority available to Plaintiffs for requesting a subpoena. Doe #4 then argues the information
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`sought through the subpoena is protected by the Family Educational Rights & Privacy Act (FERPA).
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`This Court authorized the subpoena under Federal Rules of Civil Procedure 45 after finding
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`good cause under Rule 26. This Court did not issue the subpoena under either the DMCA or the
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`Cable Communications Policy Act (CCPA) Furthermore, Plaintiffs did not mislead this Court into
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`relying on the wrong authority. This Court was aware the various opinions cited by Doe #4 on this
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`issue, and even cited them in the order granting Plaintiffs’ motion. The limited authority to issue
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`subpoenas under the CCPA and the DMCA is not a reason to quash the subpoena issued in this case
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`under Rule 45. Doe #4 cites no authority supporting the argument that the statutory subpoenas
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`somehow limit the authority provided under Rule 45.
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`Doe #4 argues the subpoena should be quashed for privacy concerns. This argument falls
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`squarely within one of the reasons a court may quash or modify a subpoena. See FED. R. CIV. P.
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`45(c)(3)(A)(iii). The authority cited in the brief is confusing.4 FERPA, 20 U.S.C. § 1232g, restricts
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`4Doe #4 cites “The Family Educational Rights & Privacy Act of 1974 (“FERPA”), 20
`U.S.C. § 1232h (Protection of pupil rights).” See Brief in Support at 10. FERPA is located at 20
`§ U.S.C. 1232g and the Protection of Pupil Rights (PPRA) is located at 20 § 1232h. Both are
`part of the Education Amendments of 1974 to the Elementary and Secondary Education Act of
`1965. Doe #4 states “[u]nder FERPA, personal information means individually identifiable
`information including a student or parents first and last name, a home or other physical address
`(including street name and the name of the city or town[)][,]a telephone number, or social
`security number. 20 U.S.C. § 1232h(c)(6) (2007).” Brief in Support at 11. As explained above,
`FERPA is located at section 1232g, not section 1232h. The definitions contained in the PPRA
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`federal funds to institutions that release educational records, including personal information. See
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`20 U.S.C. § 1232g(b)(1). FERPA includes a provision allowing those institutions to release such
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`information in response to a court ordered subpoena. See 20 U.S.C. § 1232g(b)(2)(B); Victory
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`Outreach Center v. City of Philadelphia, 233 F.R.D. 419, 420 n.1 (E.D. Pa. 2005). The Protection
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`of Pupil Rights (PPRA), 20 U.S.C. § 1232h, deals with surveys and evaluations administered to
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`students. See 20 U.S.C. § 1232h(a) and (b). PPRA requires local authorities to develop policies to
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`protect student privacy. 20 U.S.C. § 1232h(c). The PPRA restricts the release of “personal
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`information,” as that phrase is defined in 20 U.S.C. § 1323h(c)(6)(E), when the personal information
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`is collected from students for the purpose of marketing or selling the information. See 20 U.S.C. §
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`1232h(c)(1)(E) and (F)(i), (c)(2)(C)(i), and (c)(4)(A). The PPRA does not implicate the release of
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`Doe #4's personal information. The subpoena provision in FERPA overrides the privacy concerns
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`that statute protects.
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`Doe #4 argues the response to the subpoena will reveal each Doe’s student records to the
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`other Does in the action. That concern is not significant enough to merit quashing the subpoena.
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`The order granting the Rule 45 subpoena limits the information Plaintiffs may seek. Plaintiffs may
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`request from NMU only the name, address, telephone number, email address and media access
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`control address for each unknown Defendant.
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`Third, Doe #4 argues Plaintiffs have failed to establish a prima facia claim for copyright
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`infringement. Doe #4 asserts a prima facia claim for copyright infringement consists of two
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`apply only to the PPRA. See 20 U.S.C. § 1232h(c)(6) (“Definitions. As used in this subsection .
`. .”).
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`Case 2:07-cv-00187-PLM Doc #27 Filed 02/22/08 Page 7 of 12 Page ID#282
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`elements: (1) that a copyright subsists in the allegedly infringed material and (2) that the alleged
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`infringer violated at least one of the six exclusive rights granted to copyright owners under 17
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`U.S.C. § 106. Doe #4 argues Plaintiffs have failed to allege the second element. This argument
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`does not fall under any of the four reasons for a court to quash a subpoena under Rule 45.
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`Doe #4 has not persuaded this Court that the subpoena issued under Rule 45 should be
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`quashed, vacated or modified. Only the privacy argument falls within one of the four reasons to
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`quash a subpoena provided under FED. R. CIV. P. 45(c)(3)(A). The limited information allowed
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`under the subpoena minimizes the risk that unnecessary private information would become public
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`as a result of the order. FERPA specifically provides an exception for educational institutions to
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`release otherwise protected information in response to a court order. See 20 U.S.C. §
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`1232g(b)(2)(B).
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`B. Motion to Dismiss
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`The United States Supreme Court recently held, in order to survive a 12(b)(6) motion, a
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`complaint need only provide sufficient factual allegations to raise a right to relief above the
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`speculative level. Bell Atlantic Corp. v. Twombly, ___ U.S. ___, 127 S.Ct. 1955, 1964-1965 (2007).
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`The Court cautioned that a complaint must include “more than labels and conclusions, and a
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`formulaic recitation of the elements of a cause of action will not do.” Id. In the specific matter
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`before it, the Court characterized the requirement as stating “enough fact to raise a reasonable
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`expectation that discovery will reveal evidence of an illegal agreement.” Id. at 1965. The Court
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`finally noted that the complaint “may proceed even if it strikes a savvy judge that actual proof of
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`those facts is improbable, and ‘that a recovery is very remote and unlikely.’” Id. (quoting Scheuer
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`v. Rhodes, 416 U.S. 232, 236 (1974)).
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`When deciding a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), a district
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`court must construe the complaint in the light most favorable to the plaintiff, accept as true all of the
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`factual allegations in the complaint, and draw all reasonable inferences in favor of the plaintiff.
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`Directv, Inc v. Treesh, 487 F.3d 471, 476 (6th Cir. 2007); Evans-Marshall v. Bd.of Educ. of Tripp
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`City Exempted Vill. Sch. Dist., 428 F.3d 223, 228 (6th Cir. 2005). However, a court does not accept
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`as true unwarranted factual inferences or legal conclusions alleged in the complaint. Directv, Inc,
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`487 F.3d at 476. A challenge to the factual basis of the complaint is more properly addressed under
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`the summary judgment rule. Evans-Marshall, 428 F.3d at 228. The defendant has the burden of
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`establishing that the plaintiff has failed to state a claim upon which relief may be granted. Directv,
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`Inc, 487 F.3d at 476. When considering whether to grant a 12(b)(6) motion, the court primarily
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`considers the allegations in the complaint, but may also take into account items appearing in the
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`record of the case and attached exhibits. Amini v. Oberlin College, 259 F.3d 493, 502 (6th Cir.
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`2001).
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`First, Doe #4 argues the order should be set aside and the complaint dismissed because
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`Plaintiffs failed to provide advance notice of copyright infringement under 37 C.F.R. § 201.22.
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`Plaintiffs respond by stating that it is not proper to consider the sufficiency of a complaint in a
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`motion to quash and, even if it is proper, the complaint does state a prima facia showing a copyright
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`infringement. Whether the complaint states a prima facia case will be addressed below. Plaintiffs
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`are surprisingly silent with regard to the specific application of Regulation 201.22 to their claim.
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`Section 411 is a jurisdictional requirement for maintaining an infringement action and
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`prohibits, subject to limited exceptions, any action for infringement of a work until preregistration
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`Case 2:07-cv-00187-PLM Doc #27 Filed 02/22/08 Page 9 of 12 Page ID#284
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`or registration of a copyright claim has been made. 17 U.S.C. § 411(a); Subsection (b) is an
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`exception to the general rule established in subsection (a). Because of the problems associated with
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`preregistration or registration of live broadcasts, subsection (b) authorizes infringement suits, both
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`before and after the live broadcast, subject to advance notice of the intent to copyright the material.
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`17 U.S.C. § 411(b) (“. . . enables a copyright owner to institute an action . . . either before or after
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`the first fixation of a work . . that is first fixed simultaneously with its transmission, . . . , provided
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`registration of the work is made within three months after its first transmission”). See National
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`Football League v. Randor, Inc., 840 F.Supp. 1160 (N.D. Ohio 1993); Georgia Television Co. v. TV
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`News Clips of Atlanta, Inc., 718 F.Supp. 939. 951-952 (N.D. Ga. 1989). See also H.R. Rep. No. 94-
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`1476, at 158 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5774. (“Section 411(b) is intended to
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`deal with the special situation presented by works that are being transmitted ‘live’ at the same time
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`they are being fixed in tangible form for the first time.”).5 Regulation 201.22 identifies the form and
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`content of the advanced notice of copyright infringement required by 17 U.S.C. § 411(b). 37 C.F.R.
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`§ 201.22.
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`The complaint alleges Plaintiffs own copyrights for each of the recordings made available
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`downloaded and/or distributed by Defendants. (Complaint ¶ 18). Plaintiffs’ complaint does not
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`allege infringement of a live broadcast. Accordingly, the lack of notice under 37 C.F.R. § 201.22
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`is not a reason to dismiss the complaint.
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`Second, Doe #4 argues the order granting the Rule 45 subpoena should be set aside because
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`Plaintiffs misrepresented the authority for granting the subpoena. This argument is not a reason to
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`5This portion of the House Report from the Judiciary Committee is provided in the
`Historical and Statutory Notes to the statute in the United States Code Annotated. 17 U.S.C.A. §
`411 (West 2005) at 768.
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`dismiss the complaint. To the extent that Doe #4 also argues there are problems with the allegations
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`in the complaint, those problems are addressed below.
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`Third, Doe #4 argues Plaintiffs have failed to establish a prima facia claim for copyright
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`infringement. Copyright owners have the exclusive right to reproduce a copyrighted work and to
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`distribute those copies to the public. 17 U.S.C. § 106(1) and (3). To make a prima facia claim for
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`copyright infringement, a plaintiff must allege (1) ownership of a valid copyright and (2)
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`unauthorized reproduction or distribution of the copyrighted work. 17 U.S.C. 501(a) (defining an
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`infringer as one who, among other things, “violates any of the exclusive rights of the copyright
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`owner as provided by sections 106 through 112"). See Feist Publications, Inc. v. Rural Telephone
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`Service Co, Inc., 499 U.S. 340, 361 (1991) (holding that a plaintiff, for an infringement claim, must
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`establish (1) ownership of a valid copyright and (2) copying of constituent elements of the work that
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`are original). See also S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085 n. 3 (9th Cir. 1989) (noting
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`that the term “copying” is frequently used to describe the infringement of any of a copyright holder’s
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`five exclusive rights provided in 17 U.S.C. § 106).
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`Doe #4 argues Plaintiffs have not alleged and cannot prove that anyone actually copied the music
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`files from any of the Does’ computers, with the exception of Plaintiffs’ agent. Doe #4 concludes the
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`complaint does not allege any “distribution” of a copyrighted music file. In response, Plaintiffs assert the
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`complaint states prima facia case for infringement of their right to “copy” and “distribute” the material.
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`Specifically, Plaintiffs point to paragraphs 20 and 22 of the complaint. Plaintiffs allege Defendant has
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`used and continues to use
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`an online media distribution system to download and/or distribute to the public certain of
`the Copyrighted Recordings. Exhibit A identifies on a Defendant-by-Defendant basis (one
`Defendant per page) the IP address with the date and time of capture and a list of
`copyrighted recordings that each Defendant has, without permission or consent of
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`Plaintiffs, downloaded and/or distributed to the public.
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`(emphasis added) (Complaint ¶ 20). The exhibit connected with Doe #4 lists 9 songs that were allegedly
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`made available for copying at 19:32:32 EST on January 29, 2007. The exhibit alleges Doe #4 had a total
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`of 445 audio files on his or her computer and made available to others through the P2P system.
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`The complaint alleges enough facts to raise a reasonable expectation that discovery will reveal
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`evidence of copyright infringement. Construing the complaint and the exhibit in a light most favorable
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`to the plaintiff, the allegations state a prima facia case for copyright infringement. The complaint alleges
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`Plaintiffs hold copyrights to the nine music files linked to Doe #4. See Complaint ¶ 20 and Exhibit A.
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`Exhibit A identifies the name of the song, the artist, and which of the Plaintiffs holds the copyright. The
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`complaint alleges a violation of two of Plaintiffs’ rights, copying and distributing. The complaint alleges
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`Doe #4 illegally copied (downloaded) the audio files that are located on her computer. The complaint also
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`alleged Doe #4 illegally distributed (uploaded), or at least made available to others, the audio files on her
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`computer.
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`Doe #4 filed an additional exhibit which should be mentioned (Dkt. No. 25). On January 31, 2008,
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`Doe #4 filed an amicus brief prepared by the Electronic Frontier Foundation (EFF) for a case pending in
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`the District of Arizona, Atlantic Recording Corp. v. Howell, No. 06-2076 (D.C. Az. 2006).6 Both Doe #4's
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`motion to dismiss and the amicus brief prepared by the EFF address only the distribution claim and not
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`the copying claim. Furthermore, the EFF brief addressed a motion for summary judgment. The EFF (Dkt.
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`No. 25 at 11) and Doe #4 (Dkt. No. 17 at 17) contend infringement of the right to distribute can only occur
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`if there is an actual dissemination of the copyrighted work. Assuming, only for the sake of argument, that
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`6The motion for which the brief was prepared is scheduled for oral argument in early
`March 2008. Plaintiffs have not filed the response to the amicus brief submitted by the
`recording industry in that case.
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`interpretation of the statute with regard to distribution is correct, the issue would still require a resolution
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`of disputed facts. Plaintiffs have alleged acts of actual distribution. Discovery would lead to information
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`either supporting or undermining that allegation. The issue therefore would be better addressed in a
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`motion for summary judgment rather than a motion to dismiss.
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`III. CONCLUSION
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`Defendant Doe #4's motion to dismiss, to vacate and to quash (Dkt. No. 16) is DENIED. Doe #4
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`failed to establish the subpoena should be quashed for any reason provided under Rule 45. Doe #4 has
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`not established the complaint should be dismissed for failure to state a prima facia case. The specific
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`allegations in the complaint and, by reference, Exhibit A, establish a prima facia case of copyright
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`infringement. Under the standard recently established by the United States Supreme Court, the complaint
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`alleges sufficient facts to raise the right to relief above the speculative level.
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`ORDER
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`Defendant Doe #4's Motion to Dismiss Complaint, Vacate Discovery Order and Quash Subpoena
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`Issued to Non-Party NMU (Dkt. No. 16) is DENIED. The information filed under seal with this Court
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`by non-party Northern Michigan University shall be unsealed and forwarded to Plaintiffs on Tuesday,
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`March 4, 2008. IT IS SO ORDERED.
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`Date: February 22, 2008
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` /s/ Paul L. Maloney
`Paul L. Maloney
`United States District Judge
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`12