Case 2:11-cv-03331-JFB-ETB Document 10 Filed 09/19/11 Page 1 of 4 PageID #: 66
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
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`K-BEECH, INC.,
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`Plaintiff,
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`-against-
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`DOES 1-29,
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`Defendants.
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`MEMORANDUM
`OPINION AND ORDER
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`CV 11-3331 (JTB) (ETB)
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`Before the Court are plaintiff’s Motion for Leave to Serve Third Party Subpoenas Prior to Rule
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`26(f) Conference and its Emergency Motion to Preserve Data Pending Motion for Leave to Serve Third
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`Party Subpoenas Prior to Rule 26(f) Conference. For the reasons that follow, plaintiff’s motions are
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`DENIED.
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`This is copyright infringement action in which the plaintiff has sued a number of anonymous
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`alleged infringers for downloading a film called “Virgins 4" using a peer-to-peer file-sharing protocol
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`called BitTorrent. (See Complaint at 2-3). The work is not yet registered with the Copyright Office.
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`Rather, plaintiff asserts that “[o]n or about April 22, 2011, Plaintiff submitted an application for Copyright
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`Registration . . . for the motion picture.” (Id. at 2).
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`Plaintiff has identified the defendants only through their Internet Protocol (“IP”) addresses.
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`Plaintiff now asks the Court for (1) an order pursuant to Federal Rules of Civil Procedure 26(b)(2)(C) and
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`34(c) requiring Internet Service Providers (“ISP”) Optimum Online, RCN Corporation, Road Runner, and
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`Verizon Internet Services to preserve data and (2) leave to serve third-party subpoenas prior to a Federal
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`Rule of Civil Procedure 26(f) (“Rule 26(f)”) conference to those ISPs.
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`Federal Rule of Civil Procedure 26(d)(1) allows a court to issue an order permitting a party to seek
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`discovery prior to the Rule 26(f) conference. See Fed. R. Civ. Proc. 26(d)(1) (“A party may not seek
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`discovery from any source before the parties have conferred as required by Rule 26(f), except . . . when
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`Case 2:11-cv-03331-JFB-ETB Document 10 Filed 09/19/11 Page 2 of 4 PageID #: 67
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`authorized . . . by court order.”). In this Circuit, courts will allow a party to issue a subpoena under Federal
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`Rule of Civil Procedure 45 to discover a Doe defendant’s identity when there is (1) a concrete showing of
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`a prima facie claim of copyright infringement; (2) a specific discovery request; (3) an absence of alternative
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`means to obtain the subpoenaed information; (4) a central need for the subpoenaed information; and (5)
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`a minimal expectation of privacy by the defendants in the subpoenaed information. See Arista Records,
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`LLC v. Doe 3, 604 F.3d 110, 119 (2d Cir. 2010) (citing Sony Music Entertainment Inc. v. Does 1-40, 326
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`F. Supp. 2d 556, 564-65 (S.D.N.Y. 2004)). While plaintiff’s application satisfies the second through fifth
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`factors, it has not met the first because it has not pleaded a prima facie claim of copyright infringement.
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`Because the Complaint does not plead a meritorious copyright infringement claim, it does not make sense
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`to allow plaintiff the discovery it seeks.
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`To state a claim for copyright infringement, a plaintiff must claim (1) ownership of a valid
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`copyright in a work, and (2) the copying of elements of the work that are original. Feist Publ’ns, Inc. v.
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`Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991). Section 411(a) of the
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`Copyright Act “requires copyright holders to register their works before suing for copyright infringement.”
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`Reed Elsevier, Inc. v. Muchnick, — U.S. —, 130 S. Ct. 1237, 1241, 176 L. Ed. 2d 18 (2010) (citing 17
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`U.S.C.A. § 411(a)). While failure to register a work does not deprive a federal court of jurisdiction over
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`an action for infringement, valid registration is an element of an infringement claim. See id. at 1247; see
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`also Cosmetic Ideas, Inc. v. IAC/InteractiveCorp, 606 F.3d 612, 615 (9th Cir. 2010) (“[P]ost-Reed
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`Elsevier, registration is an element of an infringement claim, rather than a jurisdictional bar.”). Although
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`the Second Circuit has not addressed this specific question, courts in both the Eastern District of New York
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`The Supreme Court has left open the question of whether district courts should sua
`sponte dismiss infringement actions when the subject work is not registered. See Reed Elsevier,
`130 S. Ct. at 1249 (“We . . . decline to address whether § 411(a)’s registration requirement is a
`mandatory precondition to suit that . . . district courts may or should enforce sua sponte by
`dismissing copyright infringement claims involving unregistered works.”)
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`Case 2:11-cv-03331-JFB-ETB Document 10 Filed 09/19/11 Page 3 of 4 PageID #: 68
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`and the Southern District of New York have held that submission of an application for copyright
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`registration does not satisfy the registration precondition of § 411(a). See, e.g., Lewinson v. Henry Holt
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`& Co., 629 F. Supp. 2d 547, 553, 559 (S.D.N.Y. 2009) (holding that a work for which a registration
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`application had been sent was not registered within the meaning of § 411(a)); Corbis Corp. v. UGO
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`Networks, Inc. 322 F. Supp. 2d 520, 521-22 (S.D.N.Y. 2004) (holding that a work is not registered within
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`the meaning of § 411(a) unless and until “the Copyright Office has either approved or refused the pending
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`application for registration” and collecting cases); Capitol Records, Inc. v. Wings Digital Corp., 218 F.
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`Supp. 2d 280, 284 (E.D.N.Y. 2002) (dismissing “claims for copyright infringement based upon pending
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`registration applications”); Silver v. Lavandeira, No. 08 Civ. 6522, 2009 WL 513031, at *5 (S.D.N.Y. Feb.
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`26, 2009) (noting that, although a few courts in the Second Circuit have held that a pending application
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`for registration satisfies § 411(a), “the emerging consensus among courts in this district is that the mere
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`filing of applications and payment of the associated fees is insufficient, as a matter of law, to meet the
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`statutory requirement that a copyright be registered prior to the initiation of an infringement action”). 2
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`Because plaintiff has alleged only that the registration for the allegedly infringed film is pending,
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`Prior to Reed Elsevier, the Second Circuit had held that failure to register a work was a
`defect that deprived the federal courts of jurisdiction over an infringement action. See, e.g., In re
`Literary Works in Electronic Databases Copyright Litig., 509 F.3d 116, 121 (2d Cir. 2007) rev’d
`sub nom. Reed Elsevier, 130 S. Ct. at 1247. Thus, the cited cases dismiss for lack of subject-
`matter jurisdiction causes of action regarding unregistered works. Although Reed Elsevier
`overruled these cases to the extent that they held that jurisdiction was lacking, it did not affect the
`holdings that a work with a pending application is not a registered work within the meaning of
`Section 411(a).
`It should also be noted that there is a circuit-split on this issue. Compare La Resolana
`Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195, 1202-04 (10th Cir. 2005), abrogated
`on another ground by Reed Elsevier, 131 S. Ct. at 1247, and M.G.B. Homes, Inc. v. Ameron
`Homes, Inc., 903 F.2d 1486, 1489 (11th Cir. 1990), abrogated on another ground by Reed
`Elsevier, 131 S. Ct. at 1247 (holding that a work is not registered until its application is
`approved) with Cosmetic Ideas, 606 F.3d at 621, and Chicago Bd. of Educ. v. Substance, Inc.,
`354 F.3d 624, 631 (7th Cir. 2003), and Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386-87
`(5th Cir. 1984) (holding that receipt by the Copyright Office of a complete application satisfies
`Section 411(a)).
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`3
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`Case 2:11-cv-03331-JFB-ETB Document 10 Filed 09/19/11 Page 4 of 4 PageID #: 69
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`it has not properly pled all of the elements of a copyright infringement cause of action. Because plaintiff
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`has not made a concrete showing of a prima facie claim of copyright infringement, it has not established
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`good cause to allow discovery prior to the Rule 26(f) conference. Therefore, the Court denies plaintiff’s
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`Motion for Leave to Serve Third Party Subpoenas Prior to Rule 26(f) Conference and its Emergency
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`Motion to Preserve Data Pending Motion for Leave to Serve Third Party Subpoenas Prior to Rule 26(f)
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`Conference. This denial is without prejudice to renewal should the pleading deficiency be corrected.
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`SO ORDERED:
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`Dated: Central Islip, New York
` September 19, 2010
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`/s/ E. Thomas Boyle
`E. THOMAS BOYLE
`United States Magistrate Judge
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