Case 1:10-cv-08760-PAC Document 20 Filed 09/26/11 Page 1 of 9
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`USDC SDNY
`DOCUMENT
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`ELECTRONICALLY FILED
`DOC #: _________________
`DATE FILED: September 26, 2011
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF NEW YORK
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`DIGIPROTECT USA CORPORATION,
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`JOHN/JANE DOES 1-240,
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`Defendants.
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`HONORABLE PAUL A. CROTTY, United States District Judge:
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`10 Civ. 8760 (PAC)
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`OPINION & ORDER
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`On November 19, 2010, DigiProtect USA Corporation (“DigiProtect”) commenced this
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`action against 240 Doe Defendants who allegedly infringed its copyright by downloading and
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`distributing unauthorized copies of a pornographic audiovisual work entitled “Let Me Jerk You
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`2.”1
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` DigiProtect seeks to identify these unnamed defendants by providing the IP addresses
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`associated with the infringing activity to the corresponding Internet Service Providers (“ISP”).
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`On November 29, 2010 in its Order to Show Cause (“OTSC”), the Court ordered limited
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`discovery to identify the subscribers associated with the IP addresses, “subject to the right of
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`each ISP to challenge this Order upon notice to Plaintiff’s counsel prior to the return date of the
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`subpoena” (December 28, 2010). On November 30, 2010, DigiProtect served a subpoena on
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`nine ISPs.
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`On December 27, 2010, third parties Comcast Cable Communications Management, LLC
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`(“Comcast”) and Time Warner Cable, Inc. (“Time Warner”; collectively, “Third Party ISPs”)
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`moved (1) to modify the OTSC, and (2) for a protective order. Ninety-six of the Doe Defendants
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`1 Patrick Collins, Inc., a California corporation, d/b/a Elegant Angel Productions, a studio located in California,
`produced the film and claims to hold the copyright. DigiProtect purchased from Patrick Collins, Inc. the limited
`right to distribute this film via peer-to-peer file sharing networks, such as those allegedly used by the Doe
`defendants. DigiProtect here exercises this right to bring suit against consumers and seek “modest settlements.”
`DigiProtect USA Corp. v. John/Jane Does 1-266, No. 10 Civ. 8759 (TPG), 2011 WL 1466073, at *1 (S.D.N.Y. Apr.
`13, 2011).
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`Case 1:10-cv-08760-PAC Document 20 Filed 09/26/11 Page 2 of 9
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`are Comcast Internet service subscribers; fifty-five are Time Warner Cable internet service
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`subscribers. The Third Party ISPs argue that complying with the subpoenas would be unduly
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`burdensome in terms of money and time, disrupting their regular business operations and other
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`vital work, such as responding to valid law enforcement requests. They ask the Court to (1)
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`modify the OTSC to “allow for the reimbursement of a substantial amount of the costs Comcast
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`will incur in responding to this or any future subpoena in this action”; and (2) enter a protective
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`order for future subpoenas, limiting the scope of information sought, allowing for a reasonable
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`time to comply, and setting reimbursement amounts. (Mem. in Supp. 1).
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`At a conference on January 13, 2011, the Court raised the issues of personal jurisdiction
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`over and joinder of the Doe Defendants. After considering the submissions, the Court concludes
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`that DigiProtect failed to establish a prima facie case of personal jurisdiction over these 240
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`unidentified defendants. Publicly available software provides basic, or at least presumptive,
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`geographic information about IP addresses. DigiProtect offers no reason to make the ISPs
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`responsible for locating the defendants within the Court’s jurisdiction. Accordingly, the Court
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`vacates the subpoena and dismisses the complaint, with leave to replead naming only John/Jane
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`Doe Defendants over whom there is prima facie personal jurisdiction.
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`I.
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`Judge Griesa’s Decision
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`On November 19, 2010, the same day DigiProtect filed this action, it also filed in this
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`district a nearly identical complaint, concerning a different pornographic movie, against 266
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`other Doe Defendants. See DigiProtect USA Corp. v. John/Jane Does 1-266, No. 10 Civ. 8759
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`(TPG). That case was assigned to U.S. District Judge Thomas P. Griesa, who signed a nearly
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`identical OTSC and subpoena. DigiProtect, 2011 WL 1466073, at *1. The Third Party ISPs
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`moved to modify the OTSC and for a protective order. Judge Griesa held a hearing on February
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`2
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`Case 1:10-cv-08760-PAC Document 20 Filed 09/26/11 Page 3 of 9
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`2, 2011, at which he ordered Comcast and Time Warner to inform the court of the IP addresses
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`connected to internet accounts located in New York State. Id. The Court learned that, of the 103
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`IP addresses corresponding to Comcast accounts, none were located within New York State; and,
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`of the 43 IP addresses corresponding to Time Warner accounts, only ten were located within
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`New York State. Id. at *2. At a subsequent telephone conference, DigiProtect informed the court
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`that, based on its own research, only twenty to twenty-five of all 266 Doe Defendants used
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`internet accounts located in New York State. Id. at *2. On April 13, 2011, Judge Griesa granted
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`the motions, limiting discovery to ISP accounts located in New York State. Id. at *5.
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`II.
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`Discussion
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`A. Personal Jurisdiction
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`DigiProtect argues that the Court has personal jurisdiction over the unnamed defendants
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`because DigiProtect, as the copyright license-holder, suffered injury in New York, and because
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`the nature of peer-to-peer file sharing networks connects all out-of-state defendants with
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`defendants residing in New York. (Mem. in Supp. 4-5).
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`The Court may deny discovery if the plaintiff cannot make a prima face case for personal
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`jurisdiction over a defendant. See, e.g., Best Van Lines, Inc. v. Walker, 490 F.3d 239, 255 (2d
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`Cir. 2007). The Court applies the law of the forum state—New York—on personal jurisdiction.
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`Fort Knox Music Inc. v. Baptiste, 203 F.3d 193, 196 (2d Cir. 2000). General jurisdiction
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`requires that the defendant reside, do business, or be served with process while in New York. See
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`N.Y. C.P.L.R. § 301; see, e.g., Landoil Res. Corp. v. Alexander & Alexander Servs., Inc., 565
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`N.E.2d 488, 490 (N.Y. 1990).
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`New York’s long arm statute also provides jurisdiction over nondomiciliaries who
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`commit a tortious act within the state, N.Y. C.P.L.R. § 302(a)(2); or a tortious act outside the
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`Case 1:10-cv-08760-PAC Document 20 Filed 09/26/11 Page 4 of 9
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`state that resulted in injury within New York, id. § 302(a)(3)(ii). For a copyright infringement
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`claim, under § 302(a)(2), the tortious act committed within the state is the act of infringement, or
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`the illegal download. Yash Raj Films (USA) Inc. v. Dishant.com LLC, No. 08-CV-2715
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`(ENV)(RML), 2009 WL 4891764, at *7 (E.D.N.Y. Dec. 15, 2009). Under § 302(a)(3)(ii), only
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`the injury must occur in New York; the act of downloading may occur outside the state, but the
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`plaintiff must also show that the nondomiciliary “expects or should reasonably expect the act to
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`have consequences in the state and derives substantial revenue from interstate or international
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`commerce.” N.Y. C.P.L.R. § 302(a)(3)(ii).
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`Finally, the Due Process Clause requires proof that out-of-state defendants have “certain
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`minimum contacts . . . such that the maintenance of the suit does not offend traditional notions of
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`fair play and substantial justice.” Calder v. Jones, 465 U.S. 783, 788 (1984) (quotations omitted).
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`The New York Court of Appeals recently held that, while the site of injury under §
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`302(a)(3)(ii) in commercial tort cases traditionally has been where business is lost, rather than
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`where the plaintiff is located, “the unique bundle of rights granted to copyright owners” “tips the
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`balance in favor of New York as the situs of the injury” when a New York company’s copyright
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`is infringed by unauthorized publishing on the internet. Penguin Grp. (USA) Inc. v. Am. Buddha,
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`946 N.E.2d 159, 176 (N.Y. 2011).
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`At this point, the Court need not decide whether the Court of Appeals’ reasoning extends
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`to a New York company, DigiProtect, that holds a limited right, while an out-of-state California
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`company, Patrick Collins Inc., retains most of the bundle of rights as copyright holder. Even
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`assuming the alleged injury is in New York, DigiProtect has failed to satisfy the other
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`requirements of long-arm jurisdiction. There is no evidence “that any of the Doe Defendants
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`expected or reasonably should have expected their downloading of this film to have
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`Case 1:10-cv-08760-PAC Document 20 Filed 09/26/11 Page 5 of 9
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`consequences in New York, particularly when the producer of the film is located in California.”
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`DigiProtect, 2011 WL 1466073, at *4. Likewise, there is no basis to allege that the unnamed
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`defendants derived substantial revenue from interstate or international commerce. See id.
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`Accordingly, DigiProtect has not made a prima facie showing of long-arm jurisdiction over out-
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`of-state defendants.
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`The Court rejects DigiProtect’s argument that it has personal jurisdiction as to all 240
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`defendants, if any one resides in New York. Its argument is based on the nature of peer-to-peer
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`networks in which unauthorized copies are distributed among peers.2
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`BitTorrent protocol and eDonkey network employ “swarming” capacity is insufficient to confer
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`jurisdiction. DigiProtect does not allege that John/Jane Does served as each others’ agents or
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`conspired together, as required under § 302(a)(2), Lehigh Valley Indus., Inc. v. Birenbaum, 527
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`F.2d 87, 93-94 (2d Cir. 1975); or purposely availed themselves of New York, as required by the
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`Due Process Clause, Hanson v. Denckla, 357 U.S. 235, 253 (1958). (See Compl. ¶ 10). Indeed,
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`DigiProtect states that copies produced by swarming are unauthorized. (Id. ¶ 11). While this
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`technology may make it possible for two strangers to enable each other to commit infringement
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`without even knowing it, this mere possibility does not suggest that it has actually occurred; they
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`may have participated in entirely different swarms. Pac. Century, 2011 WL 2690142, at *3
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`2 This technology functions as follows:
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`First, the protocol breaks a single large file into a series of smaller distributable pieces. Then, an initial
`file-provider (the “seeder”) intentionally elects to distribute the pieces to third parties. . . . Other users
`(“peers”) on the network download a small “torrent” file that contains directions on where to find the
`seeder as well as an index of the pieces. The torrent file is loaded into BitTorrent software, and the
`software follows the directions in the torrent file to connect to the seeder. When peers connect to the
`seeder, they download random pieces of the file being seeded. When a piece of download is complete, the
`peers automatically become seeders with respect to the downloaded pieces. In other words, each peer in a
`swarm transforms from a pure downloader . . . to a peer that is simultaneously downloading and
`distributing pieces of a file.
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`Pac. Century Intern. Ltd. v. Does 1-101, No. C–11–02533–(DMR), 2011 WL 2690142, at *3 (N.D. Cal. July 08,
`2011). To participate, a user must be online at the time of a swarm. Donkeyball Movie, LLC v. Does, No. 10–1520
`(BAH), 2011 WL 1807452, at *5 (D.D.C. May 12, 2011).
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`Case 1:10-cv-08760-PAC Document 20 Filed 09/26/11 Page 6 of 9
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`(“Plaintiff glosses over the fact that BitTorrent users may upload different initial files of a given
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`work, which results in the creation of distinct swarms . . . , [and] the participants in the first
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`swarm would not interact with those in the second swarm. That BitTorrent users have
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`downloaded the same copyrighted work does not, therefore, evidence that they have acted
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`together to obtain it.” (internal citations omitted)). For example, the Complaint does not allege
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`that any of the 240 John/Jane Does downloaded the movie from the same website during
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`overlapping times. Id. (noting that swarming is only possible “until the user manually
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`disconnects from the swarm or the BitTorrent client otherwise does the same”). Nor does it
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`present any information about a suspected infringer’s ability to refrain from participating in
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`swarming conduct.3
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` Absent intentional conduct, there can be no personal jurisdiction.
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`Comcasts reports that “none of the IP addresses designated as a Comcast IP address in
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`[this action] is for a subscriber in New York State.” Letter from Comcast, Feb. 14, 2011, at 1.
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`Like Judge Griesa, the Court does not want to “ensnar[e] unsophisticated individuals from
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`around the country in a lawsuit based in New York,” who likely would be encouraged to settle
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`rather than incur the burden and embarrassment of contesting the litigation. DigiProtect, 2011
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`WL 1466073, at *2. Since it has failed to make a prima facie showing of long arm jurisdiction
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`under § 302(a)(3)(ii), DigiProtect is only permitted to proceed against those defendants
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`3 For the same reasons, DigiProtect cannot join hundreds of individuals in a single case by alleging that they
`infringed the same copyright by illegally downloading the same movie, albeit in separate instances. The swarming
`capacity of peer-to-peer networks alone does not mean that John/Jane Does actually engaged in “the same
`transaction, occurrence, or series of transactions or occurrences,” as required by Fed. R. Civ. P. 20(a)(2)(A). See
`Pac. Century, 2011 WL 2690142, at *3 (finding allegation that defendants downloaded same work, without evidence
`that they participated in the same swarm, insufficient); W. Coast Prods., Inc. v. Does 1-5829, No. 11-57 (CKK),
`2011 WL 2292239, at *5 (D.D.C. June 10, 2011) (finding joinder appropriate because the complaint alleged that all
`unidentified defendants participated in a single swarm); Patrick Collins, Inc. v. Does 1-118, No. 3:10-CV-92, slip
`op. at 2-3 (N.D.W. Va. Dec. 16, 2010). But see, e.g., Call of the Wild Movie, LLC v. Does 1-1,062, 770 F. Supp. 2d
`332, 343 (D.D.C. 2011). Any repleading by DigiProtect must be based on specific factual allegations connecting
`these defendants to the same specific swarming transaction, or series of transactions, to support their joinder.
`Otherwise, the only “commonality” is that “each commit[ted] the exact same violation of the law in exactly the same
`way.” Pac. Century, 2011 WL 2690142, at *4 (internal quotations omitted). The current allegations are inadequate
`to support joinder.
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`Case 1:10-cv-08760-PAC Document 20 Filed 09/26/11 Page 7 of 9
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`otherwise subject to personal jurisdiction in New York (e.g., who reside in New York or illegally
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`downloaded the movie while physically in New York). A showing that the internet account
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`associated with an IP address that allegedly engaged in infringing activity is located in New
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`York State is sufficient to establish prima facie personal jurisdiction over the alleged infringer.
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`See also CP Prods., Inc. v. Does 1-300, No. 10 C 6255, 2011 WL 737761, at *1 (N.D. Ill. 2011)
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`(“[T]here is no justification for dragging into an Illinois federal court, on a wholesale basis, a
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`host of unnamed defendants over whom personal jurisdiction clearly does not exist and-more
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`importantly-as to whom [plaintiff’s] counsel could readily have ascertained that fact.”).
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`Information about the geographic location of internet accounts connected to specific IP
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`addresses “is easily accessible and publicly available.” DigiProtect, 2011 WL 1466073, at *2;
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`see also Letter from Comcast, Feb. 14, 2011, at 1 (reporting its results, “initially made using a
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`free, publicly-available website that matches an IP address with the Internet service provider to
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`which it’s assigned and lists the geographic region in which the provider uses the
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`address,[which] could easily have been done by Plaintiff at the outset”). While the Court may
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`allow discovery to determine the basis for personal jurisdiction, Sony Music Entm’t Inc. v. John
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`Does 1-140, 326 F. Supp. 2d 556, 567 (S.D.N.Y. 2004), DigiProtect offers no reason why it
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`should be excused from making a prima facie showing that the Defendants are connected to New
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`York, particularly when this information is publicly available. Rather, it asks the Court to order
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`the Third Party ISPs to bear this burden. Accordingly, the Complaint is dismissed, with leave to
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`replead, naming only those John/Jane Does as to whom there is prima facie personal jurisdiction.
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`B. Cost of Compliance
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`Third-Party ISPs also seek protective orders requiring DigiProtect to reimburse them for
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`the costs of complying with the subpoenas. They argue that “[t]he process for linking IP
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`Case 1:10-cv-08760-PAC Document 20 Filed 09/26/11 Page 8 of 9
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`addresses to subscriber account details such as name and address [a ‘look-up’] is time consuming
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`and requires careful, systematic processes to ensure the integrity and accuracy of the results.”
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`Additionally, federal law required cable operators such as Comcast to give notice to any
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`subscriber whose identity is sought before any disclosure is made, to allow the subscriber to take
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`preventative measures. Comcast estimates the “pure cost” associated with each IP address look-
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`up at approximately $120 ($95 for administrative processing; $25 for overnight mail
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`notification). This total includes running look-ups through two systems; labor to confirm
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`authenticity and accuracy; notification by overnight mail; copying the OTSC and subpoena; and
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`interacting with responding subscribers or their attorneys. Finally, Comcast asserts that it
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`processes approximately 200 court orders, subpoenas, and warrants requesting subscriber
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`identification per business day; and that it must prioritize emergency and law enforcement
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`requests. (Mem. in Supp. 5).
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`DigiProtect does not contest these facts. It argues, instead, that the Digital Millenium
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`Copyright Act (“DCMA”), 17 U.S.C. § 512 requires the ISPs to provide this information
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`anyway. (Mem. in Opp. 10-11).4
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` This argument is wrong. See DigiProtect, No. 10 Civ. 8759
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`(TPG), Dkt. 22 (May 23, 2011 Order).
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`In deciding on how to next proceed, Plaintiff should recognize that its approach imposes
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`a substantial burden on parties with no formal interest in the outcome of the litigation. Fed. R.
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`Civ. P. 26(b)(2)(C) requires the court to enter a protective order limiting discovery where “the
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`burden or expense of the proposed discovery outweighs its likely benefit.” Courts are especially
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`sensitive to the burdens placed on nonparties. See Cusumano v. Microsoft Corp., 162 F.3d 708,
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`717 (1st Cir. 1998); Dart Indus. Co. v. Westwood Chem. Co., 649 F.2d 646, 649 (9th Cir. 1980).
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`4 DigiProtect also relies on this argument, set forth in its April 7, 2011 letter and subsequent submissions, in
`requesting leave to serve a supplemental subpoena on Comcast and Time Warner. The Court denies this request for
`the same reasons.
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`Accordingly, the Court will require DigiProtect to reimburse the ISPS for the costs incurred in
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`each IP address look-up, including notifying the relevant subscribers. Nor are the ISPs at the
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`beck and call of DigiProtect. The ISPS may limit the requests to no more than 25 IP address
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`look-up requests per month. The lSPs will have thirty days from the date of notice to the
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`subscriber to provide a response for each set oftwenty-five IP addresses. The cost allowances
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`and limitations on look—ups are based on a per IP address, rather than per subscriber, basis.
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`III.
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`Conclusion
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`Accordingly, the Court vacates the subpoena and dismisses the complaint with leave to
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`replead, within 30 days ofthis decision. The Clerk ofthe Court is directed to close this case.
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`Dated: New York, New York
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`September 26, 2011
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`United States District Judge