Article

Defense Against the Dark Arts of Copyright Trolling

I.     Introduction

Over the past six years, a small group of copyright owners has deluged the federal court system with lawsuits against John Doe defendants alleging online copyright infringement. These lawsuits are sometimes directed against a single defendant, sometimes thousands. This new wave of file-sharing lawsuits is, in our view, copyright trolling because of the opportunistic way in which they seek to monetize assertions of infringement. More importantly, we regard these suits as a kind of trolling because the plaintiffs’ claims of infringement rely on poorly substantiated form pleadings and are targeted indiscriminately at noninfringers as well as infringers. Plaintiffs have realized that there is no need to invest in a case that could actually be proven in court or in forensic systems that reliably identify infringement without a large ratio of false positives. The lawsuits described in this Article are filed primarily to generate a list of targets for collection and are unlikely to withstand the scrutiny of contested litigation. Sometimes the plaintiffs get lucky and target an actual infringer who is motivated to settle. Even when the infringement has not occurred or where the infringer has been misidentified, a combination of the threat of statutory damages—up to $150,000 for a single download—tough talk, and technological doublespeak are usually enough to intimidate even innocent defendants into settling.

The plaintiffs play a numbers game, targeting hundreds or thousands of defendants and seeking quick settlements priced just low enough that it is less expensive for the defendant to pay than to defend the claim. This game is profitable, whether the lawsuits are targeted at actual infringers or not. It is difficult to overstate the extent to which copyright trolling has come to dominate the federal copyright docket. In this Article, we report new empirical data on the continued growth of copyright trolling in the United States. We show that around 10,000 copyright lawsuits have been filed against John Doe defendants in the last six years and that these suits have accounted for almost half of all the copyright cases filed in the United States between 2014 and 2016.1 However, counting cases filed grossly understates the significance of copyright trolling, since an individual lawsuit may contain dozens, even thousands, of individual defendants.2 This places the true number of defendants in the hundreds of thousands. Many of these defendants are noninfringers.

The infringement claims made in these file-sharing cases are a Potemkin village: Their impressive façade is only paper thin.3 Despite their underlying weakness, plaintiffs have exploited information asymmetries, the high cost of federal court litigation, and the extravagant threat of statutory damages for copyright infringement to leverage settlements from the guilty and the innocent alike. We believe that copyright trolling remains profitable primarily because the sorts of lawyers who would normally defend clients from this kind of victimization do not know enough about the law and the technology involved to put up a good fight. Furthermore, the lawyers who do have the right kind of expertise are usually too expensive to make defending these cases worthwhile. A handful of public-spirited defense lawyers have bridged this divide and are successfully defending these cases, but it is only when their knowledge and experience becomes widely diffused that these particular copyright trolls will recede into the darkness from whence they came. Our purpose in writing this Article is to accelerate that process. Specifically, we analyze the weaknesses of the typical plaintiff’s case and integrate that analysis into a strategy roadmap for defense lawyers or even resourceful pro se defendants.

In this Article, we offer both a legal and a pragmatic framework for defending against copyright trolls. Part II establishes the essential background. It situates the current wave of file-sharing litigation in the broader context of trends in copyright litigation over the past two decades. It also provides a general overview of a typical file-sharing troll’s case. Part III undertakes a comprehensive and methodical review of the weaknesses of a typical plaintiffs’ case. Part IV divides file-sharing litigation into four distinct stages and maps out strategic considerations for defending against copyright trolls in each stage.

II.     Essential Background

A.     The Current Wave of File-Sharing Litigation

A cursory review of the copyright dockets of federal district courts shows that something very strange is going on. Although software companies, record labels, and motion picture studios conduct a fair amount of copyright litigation, in a large number of districts, cases filed by otherwise obscure LLCs—such as Malibu Media and PTG Nevada—make up more than half the copyright caseload.4 In 2015, the Iowa Law Review published an empirical study of copyright trolling by one of the authors of this Article.5 That article explains how copyright law’s generous approach to statutory damages and certain structural features of civil litigation have led to an extraordinary number of John Doe lawsuits alleging online copyright infringement.6 We have updated the data from that first empirical study and the results are presented in Figure 1.

Figure 1 shows the frequency of John Doe copyright lawsuits from 1994 to 2016. These John Doe lawsuits are almost exclusively related to allegations of illegal file sharing, which explains why they were virtually nonexistent prior to 2004. As indicated in Figure 1, there are two distinct waves of file-sharing litigation—one ranging from 2004 to 2008, the other beginning in 2010 and continuing to the present day. In 2003 the Recording Industry Association of America (“RIAA”) began a widely publicized campaign of lawsuits against individual file sharers, characterized as “a teaching tool”7 or “the enforcement phase” of the RIAA’s education program.8

 

Figure 1: Copyright Cases Filed in U.S. District Courts (1994–2016)9

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The RIAA wound down this program in 2008, after over 35,000 individuals had been targeted with letters of demand.10 The RIAA and its members are not copyright trolls because the industry’s end-user litigation strategy was focused on deterrence. It was designed to channel potential infringers back into the legitimate market, not as a way to monetize infringement as an end in itself. In 2010, others took up where the RIAA left off.

We refer to the current wave of file-sharing litigation as the “BitTorrent monetization era”—because the alleged infringement mostly involves the BitTorrent file-sharing protocol and because it appears the objective of the suits is to monetize infringement (or the assertion of infringement), as opposed to the pursuit of compensation or deterrence. This difference in motivation is important. In the normal paradigm of litigation, plaintiffs pursue their rights in court to seek compensation or to deter future wrongdoing. Litigation thus rights a private wrong and also performs a public good. The plaintiffs (or possibly the lawyers and litigation service providers) behind the current wave of file-sharing litigation are more interested in taking advantage of copyright law’s generous statutory damages provisions to monetize little more than the assertion of infringement.11

Copyright litigation has increased dramatically since the BitTorrent monetization era began in 2010. As we show in Table 1, although the number of cases filed in 2010 was small, lawsuits filed against John Doe defendants made up more than 52% of copyright cases in in the United States by 2014 and 58% in 2015. The number of suits dropped slightly after Malibu Media lost a case on summary judgment in February 2016, but the rate of filing is increasing again.12 Even so, between 2014 and 2016 copyright trolling accounted for 49.8% of the federal copyright docket. To focus more clearly on the BitTorrent monetization era, Table 1 shows the number of copyright cases filed in U.S. district courts from 2010 to 2016 and the number and percentage of John Doe copyright cases filed in such years.

 

Table 1: Copyright and John Doe Cases (2010–2016)13

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As we noted in the Introduction, these figures show only cases filed, not the number of defendants.14 John Doe suits have named as many as 15,000 defendants, but over the past three years almost all cases have had 1 to 50 defendants.15 Our analysis of the federal court filing records indicates that in 2016 the average number of defendants in each of the John Doe cases was, on a conservative estimate, 4.7 overall and 8.8 excluding Malibu Media cases.16 In other words, although there were 1,362 John Doe copyright cases filed last year, 6,483 individual defendants were targeted.17 Based on these findings, our best estimate is that the number of U.S. households who have received a settlement demand letter from the plaintiffs we regard as copyright trolls is in the hundreds of thousands.

Although the BitTorrent cases now dominate the federal copyright docket, there are only a handful of key players to consider. As shown in Table 2, the pornography distributer Malibu Media accounts for 62% of the John Doe cases in the 2015–2016 period alone. Another five companies—LHF Productions, Inc.; Manny Film, LLC; Cobbler Nevada, LLC; Plastic The Movie, Ltd.; and Dallas Buyers Club, LLC—collectively account for another 20%. Thus, the current wave of BitTorrent monetization lawsuits is a niche industry, rather than a general response to the problem of online copyright infringement.

 

Table 2: Plaintiffs in Copyright John Doe Cases (2015–2016)

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The business model that underpins the recent explosion in copyright litigation can be reduced to a few simple steps. The basic method is as follows:

(1)     Monitor online file-sharing networks and collect evidence of possible infringement. For the time being, it is best to think of this as a “black box” process that produces lists of alleged infringements and associated Internet Protocol (“IP”) addresses.18

(2)     File a complaint alleging copyright infringement by John Does identified only by their IP addresses in the appropriate federal district court.

(3)     Seek a court order to compel Internet Service Providers (“ISPs”)19 to provide individual account holder information matching the IP address.

(4)     Contact account holders by letter and threaten to seek very large awards of statutory damages but offer to settle for amounts ranging from two to eight thousand dollars.20

(5)     Settle as many cases as possible, and abandon virtually all the rest.

(6)     Repeat.

This formula has been profitable enough that one company, Malibu Media, filed 5,982 individual cases between 2012 and 2016, paying well over $2.3 million in federal court filing fees.21 As we explain in more detail in the remainder of this Article, these lawsuits are filed primarily to generate a list of targets for collection; these are not cases that have been built to stand up to the scrutiny of litigation. In fact, of the 10,000 cases filed in the last six years, the only ones in which the plaintiff has prevailed on the merits are those in which the defendants have admitted to committing acts that constitute infringement.22 It is impossible to know for sure how many innocent individuals have settled these cases, and upon what terms. However, our discussions with numerous defense lawyers over the past three years suggest that these cases settle from anywhere between $1,000 and $8,000 and that these lawyers believe that as many as one-third of their clients are innocent.23 Usually, we would treat such self-serving anecdotal data with a grain of salt; however, we have reviewed a number of these cases in detail and these estimates seem plausible, if imprecise.

B.     An Overview of the Plaintiff’s Case

To date, the academic literature on copyright trolling has focused on broad public policy issues relating to statutory damages, civil procedure, and the appropriateness of allowing non-rights holders to profit from copyright enforcement litigation.24 These are all worthy issues, but by focusing on the more generalizable policy questions that are the usual bread-and-butter of law reviews, the academic community has neglected two very important realities on the ground.25 The first reality is that the BitTorrent cases have victimized a substantial number of noninfringers—this seems to be a feature of the plaintiffs’ business model, not a bug. The second is that, although it would not be particularly difficult to amass credible and reliable evidence of online infringement over peer-to-peer networks, the plaintiffs do not appear to have done so in the cases we have studied.

In the typical case, the plaintiff asserts that it has evidence the defendant participated in something called a BitTorrent swarm, thereby illegally copying the plaintiff’s copyrighted work. BitTorrent is a popular communications protocol for transferring large files over peer-to-peer file-sharing networks, and although it has many lawful uses, it is widely used for illegal file sharing.26 The plaintiff claims to be able to identify the defendant by his or her IP address. The plaintiff says that it can prove the defendant participated in the swarm and made a copy of the work because the plaintiff’s technology provider has exchanged part of the relevant file with a device associated with the defendant’s IP address.

The modus operandi of the typical plaintiff in file-sharing litigation has evolved considerably over the past six years. Initially, these cases relied on the courts’ permissive attitude to joinder and social embarrassment related to pornography.27 Pornography is still well represented thanks to Malibu Media, but Malibu Media is now the only pornography plaintiff of any significance.28 The other main plaintiffs own the rights to general release motion pictures of varying quality.29 Several of the most prolific plaintiffs still rely on joinder to reduce their overhead and economize on filing fees, but they join much smaller groups of defendants than in the 2010–2013 period and claim to rely on geolocation technology to address questions relating to personal jurisdiction.30

No doubt, the lawyers who file these cases will read this Article and make some adjustments to their strategy. Anyone who played Dungeons & Dragons knows that trolls regenerate from their wounds,31 and any fan of Harry Potter knows that “[t]he Dark Arts . . . are many, varied, ever-changing, and eternal.”32 Some modifications may be purely cosmetic, but it is possible that others may be a welcome development. We have no interest in foreclosing the possibility of file-sharing litigation per se, and we would welcome a more targeted approach in which claims were well-pleaded, backed up with adequate evidence, and directed overwhelmingly at actual infringers of copyright.

III.     The Weaknesses of the Plaintiff’s Case

In this Part, we undertake a methodical survey of the weaknesses of the typical plaintiff’s case. For ease of exposition, we have divided our analysis of the weaknesses of the plaintiffs’ claims into two categories: issues that would remain even if we accepted that the plaintiffs’ technology does what they say it does—i.e., “Outside the Black Box”; and issues relating to the black box process plaintiffs use to target particular IP addresses—i.e., “Inside the Black Box.”

A.     Outside the Black Box

For the sake of completeness, we begin with a preliminary discussion of establishing copyright ownership and lack of authorization. However, the main issues outside the black box relate to plaintiffs’ reliance on joinder, personal jurisdiction, and IP addresses.

1.     Ownership of a Valid Copyright

Section 106(1) of the Copyright Act gives the copyright owner the exclusive right “to reproduce the copyright[] work in copies.”33 To establish a violation of this right, a plaintiff must prove “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original” without authorization.34 The plaintiff can usually establish ownership of a valid copyright with a Copyright Office registration. This should be straightforward; however, we are aware of one case where a plaintiff brought suit on the basis of a copyright it had assigned to a third party, while that third party pursued a suit of its own in a different district, based on the same copyright.35 In some cases there have also been discrepancies between the plaintiff’s copyright registrations and the works it claimed were infringed.36

Some defense lawyers may want to question whether pornographic works are entitled to copyright protection, either as a matter of public policy or because they fail to display sufficient amount of original authorship or creativity. In general, this is a losing argument; pornography has long been considered copyrightable.37 However, at least one judge has suggested, in an order denying Malibu Media leave to issue a third-party subpoena, that obscene materials may not be copyrightable.38 Nevertheless, this argument is not likely to have much traction, and attorneys tempted to pursue that route should be aware that a determination that a work is obscene requires a jury and a fairly steep standard of proof because of First Amendment concerns.39

2.     Lack of Authorization

In many ways, the Prenda Law firm pioneered this form of copyright trolling. Prenda is now defunct as a firm. One of Prenda’s principals, Paul Duffy died in 2015, and the remaining principals, John L. Steele and Paul R. Hansmeier, were placed under federal indictment in December 2016 for “an elaborate scheme to fraudulently obtain millions of dollars in copyright lawsuit settlements by deceiving state and federal courts throughout the country.”40 In addition to lying to the court,41 forging documents,42 and practicing identity theft,43 the Prenda firm went so far as to “seed” their clients’ movies on BitTorrent networks to make them available for download.44 This self-seeding was proven in one case45 and suspected in others. If any plaintiffs (or their lawyers or service providers) were continuing this practice today, it would negate their complaint altogether, as such an uploading would likely amount to an authorization to download. However, Prenda is long gone, and as spectacular as such a discovery would be, we do not believe that defense lawyers need to go down this particular path of investigation.

3.     Improper Joinder

The Federal Rules of Civil Procedure allow plaintiffs to join multiple individual defendants in a single action in certain circumstances.46 To understand the joinder issues raised in these cases, we need to explain some of the features of BitTorrent. The BitTorrent protocol is such a powerful and popular tool for file sharing because of the way it handles large files. At the beginning of the process, a BitTorrent client (software that implements the BitTorrent protocol) segments a large file into thousands of smaller “pieces” that can be downloaded in any order and reassembled by the end user.47 This initial process is called “seeding.” Each piece of the original seed file is assigned a unique alphanumeric identifier and the client records each piece’s hash identifier within the torrent descriptor file.48

Once a file has been broken into pieces in this way, it can be downloaded by multiple individuals simultaneously.49 A group of individuals downloading the seeded file is known as a “swarm.”50 One advantage of BitTorrent is that there is no need to maintain a connection between the original seeder and the downloader for the duration of the download; any participant in the swarm can download any piece from any other participant who already has it.51 “Piece” in this context does not mean any old chunk of ones and zeros; it refers specifically to the pieces into which the initial seeder broke up the file.52 Swarm members are typically downloading and uploading pieces from and to other computers in the swarm at the same time.53

Participants in a BitTorrent swarm are not like criminals planning a bank heist. The “peers” who constitute the swarm do not directly communicate with each other and they are separated by time and distance. Swarms can last for months, during which their respective memberships may constantly change, and most participants in a BitTorrent swarm have direct connections with only a few other members of that swarm.54 According to one expert, the average peer (a swarm member who is not the initial seeder) interacts with less than 1% of the total number of swarm participants.55

There are two requirements for joining multiple individual defendants in a single action under Federal Rule of Civil Procedure 20(a)(2). First, the complaint must be asserted against the defendants “jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences.”56 Second, there must be common questions of fact or law.57 There is no clear consensus as to whether all of the participants in a BitTorrent swarm are involved in a “series of transactions or occurrences” that are sufficiently related to allow joinder. Certainly, “merely committing the same type of violation in the same way does not link defendants together for purposes of joinder.”58 A number of courts have determined that mere participation in a swarm is not enough for joinder, because the plaintiff could not prove that any two defendants actually exchanged any information or that any two defendants participated concurrently.59 Some courts have pointed to the vast network of uploads and downloads within a swarm as being simply too loosely conglomerated to permit joinder,60 and one court has laid out a rule requiring all joined parties to have directly exchanged data.61 Other courts have been reluctant to allow discovery to proceed when the only basis for joinder is that all defendants used the same ISP or and were part of the same BitTorrent swarm.62 However, a number of other courts have taken a more permissive view, holding that, so long as there is at least some logical connection between each defendant, joinder is proper and that it is not necessary to prove that defendants acted in concert or specifically exchanged information.63 Under this view, participation in a swarm is a “cooperative endeavor,” regardless of time or distance, because each member willfully assists in others’ infringement.64

Even if participation in a swarm is sufficient to allow joinder, courts still have the power under the Federal Rules of Civil Procedure to disallow joinder for discretionary reasons.65 Courts are more likely to deny joinder on discretionary grounds in the earliest stages of litigation, particularly when a defendant opposes joinder in conjunction with a motion to quash a subpoena. They are also more likely to do so if the number of defendants is so high as to seem unwieldy. Some judges have allowed joinder on the express understanding that these cases are never intended to go to trial and that joining defendants is an efficient way to handle the initial third-party discovery phase of the case.66 Other judges have denied joinder on discretionary grounds in view of the practical problems that would result from aggregating large numbers of tenuously connected defendants into one case.67 Still others have refused to allow joinder en masse because of its associations with “abusive litigation tactics.”68 It is hard to predict in advance which courts will object to suits “solely to facilitate demand letters and coerce settlement, rather than ultimately serve process and litigate the claims”69 and which will not.

4.     Personal Jurisdiction

The defendant in a civil case can challenge personal jurisdiction at any time before filing the answer to the complaint. After that, the defense is waived.70 ISPs usually notify individual defendants whose personal information is subject to third-party subpoena before complying with such a subpoena. This gives the defendant an opportunity to challenge the subpoena before her personal information is revealed and she is named as a defendant. In the context of copyright trolling cases, it particularly makes sense to challenge personal jurisdiction when contesting the plaintiff’s third-party subpoena, or in the alternative, in the context of a Rule 12(b)(2) motion to dismiss.71 However, lack of personal jurisdiction can also be raised as an affirmative defense in the answer to the complaint.72

As the Supreme Court explained in International Shoe Co. v. Washington, the Due Process Clause of the Constitution requires that for personal jurisdiction to attach, a defendant must “have certain minimum contacts with [the forum state] such that the maintenance of the suit does not offend ‘traditional notions of fair play and substantial justice.’”73 John Doe defendants may not have minimum contacts in any jurisdiction other than the state in which they live. In the beginning of the copyright trolling era, plaintiffs paid very little regard to personal jurisdiction and would seek discovery against thousands of IP addresses in a single action without any investigation of the account holder’s likely location.74

There is something of a Catch-22 here: If plaintiffs do not know the name and address of the IP address account holders, it is difficult for them to be confident about personal jurisdiction until they subpoena the John Doe’s ISP. The solution to this problem is to employ geolocation services that purport to match IP addresses with physical locations. The standard practice of copyright trolls at the moment is to simply assert that they have used such geolocation technology.75 Some courts in the Ninth Circuit have refused to issue third-party subpoenas to ISPs until the plaintiff is able to provide sworn testimony regarding the use of this technology.76 Courts in the Second Circuit have taken the same course.77 Requiring more than a simple assertion that geolocation technology was used is appropriate in our view because geolocation technology is not always reliable. For example, some geolocation trackers will assign an IP address to a random geographic location within a country if it cannot identify a more specific location.78 In addition, IP addresses are commonly spoofed or hacked using a variety of methods as described below.79 We address how to challenge a complaint based on lack of personal jurisdiction in Part IV.A.

5.     Reliance on IP Addresses

Even if one accepted the results of the plaintiffs’ black box process on faith, all that it shows is that some anonymous person on the Internet initiated a file transfer of part of a copyrighted work through the defendant’s IP address. The plaintiff’s inability to bridge the divide between an IP address and a specific person is a fundamental weakness that cannot be cured by a better black box.

IP addresses are not people. Indeed, IP addresses are often used by multiple people in ways that make it very difficult to be sure who is responsible for what activity. Routers are left unsecured or with factory defaults; passwords are shared with family members, roommates, guests and neighbors; unsecured guest accounts are created and then forgotten; passwords are cracked;80 passwords are reused across different contexts (and once a password is guessed or compromised in one context it is worthless in all of them);81 and backdoors are opened up by malware82 and unsecure devices, including printers and even refrigerators.83

In addition, there are a variety of ways that a hacker can hide their own IP address by using someone else’s.84 Regardless of whether IP addresses can be tracked reliably in other contexts, they may be particularly unreliable in the BitTorrent context, because the BitTorrent protocol was designed to allow high-bandwidth connections and thus “does not perform . . . source IP address validation.”85 In practice, this means that the header information (think of the envelope on a letter in the postal system) transmitted by a swarm participant can display someone else’s IP address.86 This problem is compounded by the fact that many sites coordinating BitTorrent swarms “inject random IP address[es] into their swarm list results.”87

The boilerplate complaints used by plaintiffs in John Doe file-sharing cases do not plead the identity of the defendant with specificity. Contrary to modern pleading standards, the plaintiffs rely on IP addresses and typically provide nothing to link the named defendant—the subscriber to the Internet account—to the act of infringement. Ironically, this problem becomes more acute once the plaintiff learns the identity of the IP address account holder. If we suspend our disbelief as to the plaintiff’s black box process, it may seem reasonable to allege that an unknown person using an IP address, 91.220.139.137, for example,88 infringed its copyright in a particular manner at a particular point in time.89 However, when the plaintiff amends its complaint to replace “John Doe using IP address 91.220.139.137” with the name of whoever pays the bill on a particular Internet account, it is asserting, usually without any evidence, that the account holder and the John Doe are one and the same.

Courts have repeatedly found that the mere fact a defendant pays for the Internet account linked to an IP address does not prove that particular defendant was the infringer;90 nor does it prove that she is somehow contributorily or vicariously liable for the infringement of others who use her IP address.91 However, district courts are hardly unanimous in this approach.92 In Part IV, we discuss how this potentially fatal weakness should be addressed as part of the defense strategy.

6.     Reliance on Propensity Evidence

Even innocent defendants may not be angels. It is entirely possible that a defendant’s hard drive will contain file-sharing applications including a BitTorrent client. However, there are perfectly legitimate uses of BitTorrent and similar software. Furthermore, any suggestion that, because the defendant has used a file-sharing application in the past, she is likely to have used one to infringe the plaintiff’s work, is overreaching.93 It would also be propensity evidence which is inadmissible in civil trials under the Federal Rules of Evidence.94 Evidence that a defendant has installed a file-sharing application would be admissible to impeach or contradict defendant’s other testimony, but it is not proof of infringement and cannot be considered as propensity evidence.95

7.     Using the Lack of Evidence as Evidence

At the end of the day, for reasons that will become clear in the next section, the plaintiffs’ best hope of proving their accusations is to find evidence of infringement on the defendants’ hard drives. However, in several cases where no such evidence was found plaintiffs tried to make lemonade out of lemons by arguing that, since the defendant must be guilty, the absence of evidence on his or her hard drive simply indicates that the defendant spoliated evidence by deleting the relevant files.96

Certainly, a party who was on notice that litigation had commenced and had deleted evidence would be subject to a presumption that such spoliated evidence was helpful to the opposing party.97 Defense attorneys need to strongly caution their clients against spoliation of evidence, and they should explain that a freshly-erased hard drive can be even harder to explain than a hard drive with evidence of infringement. However, spoliation is a serious accusation, and it requires proof beyond the plaintiff’s belief that the evidence must have existed.98 The plaintiff must show that files were deleted, not simply that the defendant knew how to delete files, and that this was done after the defendant was on notice of litigation,99 and that the deleted files were relevant to the litigation.100 Asserting spoliation in the absence of such evidence is merely a tactic used to harass the defendant and delay the inevitable.

B.     Inside the Black Box

1.     No Evidence of a Copy Being Made

The plaintiffs in the cases we have examined rely on records generated by a black box process. Those records strike us as entirely inadequate, and the limited available evidence suggests the process itself is unreliable, if not incredible. In this Section, we focus on why the records produced by the black box process are insufficient, even if one accepts their veracity. The heart of the problem is that the plaintiffs’ technology providers do not appear to actually collect evidence that any individual John Doe has actually copied a substantial portion of any copyrighted work. Indeed, although the typical complaint alleges that the John Doe defendant joined a BitTorrent swarm, it falls short of alleging that the defendant actually made a copy of the work. This is not an oversight.

The black box process produces records of IP addresses that are supposedly matched to specific file exchanges.101 Understanding what these records do and do not show requires a short digression into Internet design and a brief discussion of some technical details about BitTorrent. As we have mentioned already, every time a file is seeded using BitTorrent, it is broken down into pieces. Each piece has a “hash value” identifier, as does the seed file itself. In computer science, a hash function is used to map information of indeterminate size to a string of letters and digits of fixed size. A “perfect” hash function will generate a unique hash for each unique input. For example, as shown in Figure 2 below, the 128-bit hash for the Gettysburg Address changes entirely if we change only the fourth last word from “perish” to “vanish.”


Figure 2: Text to Hash Value Illustration102

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Hash identifiers are used in BitTorrent to check errors. The hash identifier for a particular piece is compared to the hash identifier recorded in the torrent descriptor file for that piece every time it is downloaded. Courts sometimes say, “the hash identifier works like an electronic fingerprint,” but this is only true if that piece is downloaded in full. Information does not flow across the Internet like water flows from a hose. Instead, it is bundled into discrete “packets.” The fact that packets can be transmitted along different routes and received out of order makes the Internet flexible and resistant to central attack. Packets each contain instructions for delivery and assembly, i.e., where they should go and how they fit with other packets. Each packet is very small. A typical packet is around 1,500 bytes; a standard motion picture, even in the compressed formats popular on file-sharing networks, is around 900,000,000 bytes. This means that about 600,000 packets of data are required to download an average film using BitTorrent. Critically, the smallest piece of any file is still much larger than the standard packet, and thus even individual pieces are transmitted in several packets.

The plaintiffs’ black box process records some individual packets of data associated with a given IP address, but these packets do not add up to much by themselves. Combined with other packets, they may add up to a piece of the copyrighted work at issue, or they may not. So, if we think of a file as a completed jigsaw puzzle with a unique identifying number, then the pieces of that puzzle are like the pieces that BitTorrent breaks the file down into. However, as illustrated in Figure 3, the data transmitted in one single packet is like a fragment of a piece of a puzzle.

 

Figure 3: File, Piece and Packet Illustrated as Puzzle, Piece and Fragment

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The plaintiffs’ black box records individual packets along with a timestamp and a hash value. These records are kept in Packet Capture files (“PCAPs”) and are stored in a file format that ensures they cannot be altered after the fact. Plaintiffs often describe in great detail the inviolability of the “WORM” drives they use to secure these recordings,103 but this is largely a distraction from the gaps in their evidence. In the cases we have been able to examine, the plaintiff’s technology provider does not record the entire work being transmitted to or from the John Doe; it does not even record an entire piece of the work—piece in the technical sense meaning a piece as defined by the initial seeder.104 Instead, it simply records a few packets of data, which are just tiny fragments of pieces of the work.105 One of the frequently used technology providers, Excipio, apparently records 16 kilobytes of data for each member of a swarm.

How small is 16 kilobytes?

In Elf-Man, LLC v. Lamberson, the 16,397 bytes of data transmitted between the investigator’s machine and the IP address associated the defendant was, 0.0021961951% of the estimated 746,609,456 bytes that the file itself comprised.106 In seconds, this amounts to 115 milliseconds of an 87 minute long film.107 In literary terms this would amount to the words “Mr. and” from the first line of the 76,944 words in Harry Potter and the Philosopher’s Stone.108 There is no technical reason that would prevent the technology provider from recording more data to show that an entire work was transmitted. The reason for this limited gathering of evidence appears to be related to the cost of storage.109

One problem here is that although anyone can verify the hash value of a piece—and thus determine that piece X1 is part of file X—no one can verify the hash value of less than the complete piece. Anything less than the original piece would by definition have a different hash value. No doubt, there are other ways to compare the content of less-than-a-piece to the original file, but it is far from clear that the plaintiff’s contention that their technology provider observed the hash value of the fragment exchanged with defendant proves anything. Imagine if the only evidence of a traffic violation was a declaration that some custom-made software had recorded a particular license plate going through a red light. Naturally, the defendant would want a chance to examine that software, have it tested, find out who used it, and validate how it had been used. No defendant would simply accept a spreadsheet printout that showed only a street address and her license plate number as incontrovertible evidence of her guilt. This is why government red light cameras provide photos and not just lists of license plates.110

This raises a fundamental problem. The plaintiff’s PCAP evidence fails to prove that the defendant reproduced a substantial portion of any copyrighted work. The spreadsheet of hash values and timestamps plaintiffs usually provide with their complaints only purport to show a one second connection between the John Doe’s IP address and the plaintiff’s black box data collector—a snapshot of a download that supposedly occurred. Plaintiffs could easily do a better job here. The pieces that a peer has obtained are specified in a “bitfield” and this information is transferred at the beginning of the connection between any two peers.111 Thus, the bitfield should be at the beginning of the packet capture—in other words, it is in the PCAP files already if anyone would care to look. It should be easy for the plaintiff to show that a particular swarm member had downloaded anywhere from 0% to 100% of the file in question. Plaintiffs must have this data, but they do not include it in their pleadings or in any of their usual exhibits. It may be that this is because plaintiffs do not wish to confine their accusations to IP addresses that have in fact been associated with downloading substantial portions of their works.

Several courts have rejected this so-called “snapshot theory” of pleading in BitTorrent cases because a snapshot does not prove what happened next. If plaintiffs want to allege a copy was made, they should collect evidence that a copy was made, not simply that a small fraction of a copy was made. Moreover, copying a small fraction does not amount to copyright infringement in these circumstances because a small fraction of a piece of the copyrighted work is not sufficiently “substantially similar” to the original to prove infringement.112

Furthermore, a digital file that is too incomplete to play is not technically a “copy” of the work at all under the Copyright Act. Section 106(1) of the Copyright Act provides that “the owner of copyright under this title has the exclusive right[] . . . to reproduce the copyrighted work in copies.”113 Section 101 defines copies in the following terms:

“Copies” are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “copies” includes the material object, other than a phonorecord, in which the work is first fixed.114

In ordinary circumstances, a person who reproduced one chapter of a copyrighted novel would seem to have reproduced a substantial part of the work in a copy. Assuming copying in fact has been established, the test for whether the threshold for infringement has been met by an act of partial reproduction is usually expressed in terms of whether the ordinary observer would regard the two works as substantially similar or whether the amount reproduced is quantitatively and qualitatively significant.115 Prior to the substantial completion of a BitTorrent download, a file is simply “an encrypted, unusable chunk of zeroes and ones”—it is not a “copy” at all within the legal definition.116 It is not a copy because it is not a material object in “which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”117 The argument that a few fragments of a single piece of a work could ever meet the substantial similarity threshold seems tenuous in any context. However, in the context of partial digital files, it should be a nonstarter. We say should be because we are not aware of anyone that has made this argument before, but to us it is compelling.

2.     The Black Box Has Credibility Problems

The reason we describe the plaintiffs’ system for identifying supposed instances of infringement and alleged infringers as a black box is because the corporate entities, people, software, and processes relied upon to prove infringement are somewhat shadowy and opaque. All of the key plaintiffs in the John Doe file-sharing cases from 2015 and 2016118 rely, at least in part, on investigation and technical assistance based in Germany.119 The corporate identity of the German company or companies providing this assistance is a matter of some speculation, but there are overlaps and coincidences to suggest that these companies—Guardaley, IPP International, Excipio Gmbh, and MaverickEye UG—are all essentially the same entity or are at least controlled by the same people.120

We cannot stress enough how strange it is that the plaintiffs rely on overseas technical advisers to collect their evidence. BitTorrent is somewhat technical, but the skills required are hardly unique to Germany. Connecting to peers, downloading data, performing packet captures, and storing and parsing the PCAP files are all well-understood tasks. Furthermore, most of these tasks can be performed using open source versions of the BitTorrent client and other off-the-shelf products.

Why Germany is one question; another is: Who exactly are these technical advisors? The corporations and people that comprise the black box (or boxes) form such a labyrinth that the only way to make sense of it is to pull on a thread and see where it leads. We begin with the Crystal Bay Corp. In at least 485 cases, plaintiffs have relied upon evidence gathered by Crystal Bay Corp. and its “software consultant,” Darren M. Griffin.121 However, Darren M. Griffin does not appear to exist, and Crystal Bay Corp. seems to be merely a “shelf corporation.”122

Another figure associated with Crystal Bay Corp. is Daniel Macek.123 Daniel Macek is also apparently a consultant to MaverickEye UG, and his declarations in that capacity are almost identical to his ones on behalf of Crystal Bay Corp.124 Yet he also works at IPP.125 We know that Mr. Macek exists, because he has been cross-examined in an Australian court, and during the course of that cross-examination, Macek admitted to not preparing his own affidavit.126 Macek’s declarations are quite similar to those of Daniel Arheidt, who is also a consultant to MaverickEye UG127 and, at other times, IPP.128 At other times, Arheidt is the Director of Data Services for GuardaLey, International.129 More curious still, when a defense attorney in Elf-man, LLC v. Lamberson telephoned the number for Mr. Macek (who declared himself to be a consultant for Crystal Bay Corp.) provided in his Initial Disclosures, the phone was answered “GuardaLey.”130 Guardaley, LLC is controlled by Ben Perino and Patrick Achache and a recent lawsuit by James S. Davis, a former plaintiff’s lawyer in several BitTorrent cases, suggests that the various other technical services providers are merely fronts for Guardaley. In July 2017, Davis filed suit against another plaintiff’s lawyer and several copyright trolls alleging that those parties deceived him into participating in a copyright litigation campaign by withholding “numerous material facts . . . which would have cast doubt on the value and ethical propriety of” that campaign.131 The Davis lawsuit refers to “Guardaley and its front companies.”132

What does this rather unedifying game of six degrees of separation show? Without further discovery, it is difficult to say, but given the corporate shell games and game of musical chairs played by the various declarants, defendants surely will have questions about the credibility of the black box. These credibility questions are compounded by the admission that at least one technology provider was working on a contingency fee basis in Malibu Media cases.133 As the First Circuit explained in Crowe v. Bolduc, “The majority rule in this country is that an expert witness may not collect compensation which by agreement was contingent on the outcome of a controversy. That rule was adopted precisely to avoid even potential bias.”134 In some states this amounts to an ethical violation by the lawyer who procured the testimony. Surprisingly, nothing in the Federal Rules of Evidence expressly bars testimony from contingent fee experts, but such evidence may be excluded in some jurisdictions. At the very least, the contingency fee arrangement is grounds upon which the fact finder may discount the witness’s credibility.135

3.     Defendants Never Get to See Inside the Black Box

More importantly, by relying on a black box (or even multiple black boxes) located in Germany, whose activities are distributed between various corporate entities, employees, and “consultants,” the principals behind the BitTorrent monetization litigation have made it very difficult to scrutinize the inner workings of the black box.136 For example, in Malibu Media, LLC. v. Doe, the plaintiff relied on evidence from two supposedly distinct companies, but relied on a witness who was only passingly familiar with one.137 That witness provided no real insight into the black box process, as he had not actually seen the PCAP files that supposedly evidenced infringement,138 and he had no relevant expertise with the software used to create them.139

By setting up the black box (or black boxes) overseas, the plaintiffs make it very hard to depose witnesses or to investigate their technology. By dividing the functions of the black box into layers, the plaintiffs add another layer of obfuscation: They claim that the workings of the software are a trade secret and thus undiscoverable. Essentially, the plaintiffs seek to rely on the results of a black box process without providing any details of how the process works or, indeed, if it works at all.140 We do not suggest that the plaintiffs never identify actual infringers, but we know that they often identify targets who can prove they were out of town or overseas at the time of the supposed infringement and others who are supposed to have downloaded movies in languages they do not speak.141 Once a process has been shown to be prone to error, it seems reasonable to question how common those errors might be, what caused them, etc. Answering these questions means getting inside the black box. The plaintiff’s “expert” reports insisting that the technology provider’s processes are foolproof must be treated with some skepticism if they fail to explain why infallible systems result in false positives from time to time.

Plaintiffs have also sought to avoid scrutiny by presenting expert witnesses who set up and monitor the black box system as merely fact or lay witnesses.142 The argument is that anybody could testify to the same facts after merely downloading and running the monitoring software and reviewing the resulting list of alleged instances of infringement. This keeps the experts from being deposed in a normal fashion and ensures that they can provide their testimony from the comfort of their home countries.143 This strategy failed spectacularly in Malibu Media v. John Doe.144 In that case, forensic examination of the defendant’s electronic devices produced no evidence of infringement.145 Nevertheless, the plaintiff argued that technical evidence gathered by its forensic investigators in Germany demonstrated that the defendant had copied and distributed its works. The plaintiff relied on declarations by Tobias Fieser and Michael Patzer for that evidence but failed to disclose those witnesses as experts under the Federal Rules of Civil Procedure.146 In her memorandum opinion and order granting the defendant’s motion for summary judgment, the Magistrate Judge noted that, when challenged to identify exactly which pieces of the plaintiff’s copyrighted work came from the defendant, Malibu’s counsel said:

It is very technical, your Honor. And perhaps the remedy for the issue is for them to have an expert look at the PCAP[]s, the SQL files in the spreadsheets that we have given them, because that’s all we have . . . They are trying to get us to interpret that data for them when, first of all, I can’t do it, my client can’t do it.147

In another exchange, Malibu’s counsel also admitted, “It is very complicated. And I’m not going to stand here and say that I understand the technical aspects of it because it is way over my head.”148 The court had little choice but to conclude that the proffered testimony was that of a “witness who is qualified as an expert by knowledge, skill experience, training, or education” under Federal Rules of Evidence 702, as opposed to lay witness opinion under Federal Rules of Evidence 701. The testimony of both witnesses required familiarity with specialized software and with reading and analyzing data in the form of PCAPs. As underscored by Malibu’s own counsel’s protests quoted above, this is something no lay witness would comprehend, let alone be able to perform. As far as we know, this software is not documented, and has not been authenticated.149 What is more, any evidence produced by the black box software is vulnerable to an attack under Daubert v. Merrell Dow Pharmaceuticals, Inc., which requires the trial judge to act as a gatekeeper against evidence that is not reliable.150 Under Daubert, a court should consider (1) whether a theory or technique “can be (and has been) tested”; (2) “whether the theory or technique has been subjected to peer review and publication”; (3) “the known or potential rate of error”; and
(4) whether it is generally accepted in the scientific community.151 The black box software is none of these things, because it has never been seen or tested by anyone not connected to a plaintiff in file-sharing litigation.

C.     Why Do Such Weak Cases Persist?

In light of all of the weaknesses in the plaintiff’s case addressed thus far, the obvious question is why do so many people settle? There are many possible answers to this question. Some defendants may settle because they know they were in fact responsible for the infringement and they reason it is better to pay now than to pay more later. The threat of statutory damages up to $150,000 per work infringed plus attorneys’ fees is obviously also a great motivator for settlement. In the Malibu Media cases, some defendants may also wish to avoid being named in a lawsuit involving pornography. For reasons that are well documented, many people targeted by copyright trolls will not seek legal assistance and will be overawed by the evidence that supposedly exists against them.152 Furthermore, defendants may seek legal advice from attorneys who do not know enough about copyright litigation to realize how weak the plaintiff’s case is or who rightly conclude on a cost-benefit analysis that it would be cheaper to settle than to properly investigate the strength of the claim. Finally, and most dishearteningly, some defense lawyers prefer to settle every case, even when presented with concrete proof that the defendant could not have infringed.153

As stated in the Introduction, our objective in this Article is to make it easier for lawyers without substantial experience in copyright law or a deep understanding of the Internet to defend their clients against copyright trolls. In our view, lawyers should not charge large fees to settle weak allegations but instead should either charge low fees for quick settlements for actual infringers or reasonable fees to defend their non-infringing clients. In the next Part, we map out a strategy for fighting copyright trolls that takes into account each of the weaknesses addressed thus far.

IV.     Strategies for Defending Against Copyright Trolls

In this Part, we map out a fairly comprehensive strategy for defending against copyright trolls. We have compartmentalized the strategy into four distinct stages: Stage I begins with the copyright owner’s complaint and addresses motions to quash and motions to proceed anonymously; Stage II begins when the plaintiff amends its generic complaint to name an individual defendant; Stage III spans from discovery to summary judgment; and finally, Stage IV encompasses the trial.

Compartmentalizing the various stages of litigation in this fashion should give lawyers and their clients some idea of what to expect. We also recognize that clients vary in terms of their social capital, financial resources, attitude toward risk, culpability, and sense of moral outrage. We have tried to anticipate some of this variation in the strategies we outline below, but we recognize that generic responses to generic accusations of copyright infringement can only go so far.

A.     Stage I: Complaint, Subpoena, Threat Letter, and Response

The first stage begins with the plaintiff’s initial John Doe complaint, spans third-party discovery and the plaintiff’s threat letter, and concludes with a letter on behalf of the defendant. Many cases will crumble at the end of Stage I, and lawyers should consider offering representation up to the end of Stage I for a low fixed fee (in the hundreds, not thousands). In most cases, all that the defense lawyer needs to do at Stage I is to interview the client and respond to a boilerplate complaint with a general denial.154

1.     The Complaint

Stage I begins when the plaintiff files a complaint alleging that one or more John Does infringed its copyrights by engaging in online file sharing. The complaints are boilerplate and contain almost no specifics other than a list of copyrighted works and IP addresses. At this stage, the complaint is primarily a pretext to obtain third-party discovery orders to compel various ISP’s to disgorge the account details of their subscribers.

2.     Subpoena, Motions to Quash and to Sever

Typically, an ISP will notify its customers before responding to a subpoena. This gives the defendant a chance to challenge the subpoena before her information is revealed, i.e., before the issue becomes moot. Defense attorneys, or even pro se defendants, may wish to consider a motion to quash the plaintiff’s subpoena, pursuant to Federal Rule of Civil Procedure 45(c)(3)(A).155 Ordinarily, “[a] party may not seek discovery from any source before the parties have conferred as required by Rule 26(f), except in a proceeding exempted from initial disclosure under Rule 26(a)(l)(B), or when authorized by these rules, by stipulation, or by court order”;156 however, a court may allow early discovery for good cause.157 Countering the plaintiff’s arguments for good cause is key to quashing its subpoena.

One argument against early discovery is that, even when the plaintiff obtains the account holder’s personal information, it will not be any closer to making a prima facie case connecting a specific defendant to the alleged infringement. Courts take different views as to whether the inference that the account holder is the infringer is strong enough to sustain a third-party subpoena.158 As one court noted: “[Plaintiff] has not established a violation by the individual to whom the relevant IP address is registered.”159 In our view, a court should not allow early discovery to reveal the personal information of the account holder linked to an IP address unless and until the plaintiff presents credible evidence regarding the methodology used to associate the IP address with a particular act of infringement. Plaintiffs in several cases have relied on experts who had no personal knowledge of the facts about which they testified and have instead simply asserted that the methods used by the plaintiffs were the same as those used by law enforcement and that, in other contexts, the account holder is always the infringer.160 Even just as a basis of discovery, this level of proof is utterly inadequate.161

Even if a court was inclined to allow discovery to determine the account holder behind an IP address in some circumstances, it may refuse to do so because of other weaknesses in the plaintiff’s initial case. An essential part of the plaintiff’s good cause argument is that it can establish a prima facie claim for copyright infringement. The problem here is that, as discussed in Part II, plaintiffs do not appear to collect enough evidence to establish infringement. As one court noted in this context, “[Plaintiff] conspicuously fails to present any evidence that John Doe either uploaded, downloaded, or even possessed a complete copyrighted video file.”162 Another court candidly found that “individual BitTorrent file pieces are worthless . . . [and] that [plaintiff]’s case is weak if all it can prove is that the Doe Defendants transmitted only part of all the BitTorrent pieces of the copyrighted work.”163

In multiple-defendant cases, a defendant can challenge the plaintiff’s subpoena on the basis of improper joinder. This can be done either as a motion to quash or as a motion to sever.164 Motions to sever the defendant from a large number of other defendants are typically granted,165 while attacks on joinder for smaller numbers of defendants may or may not be successful.166 In the alternative, the defendant can challenge the subpoena for lack of personal jurisdiction.167

In addition to these specific objections, some courts have refused to allow early discovery due to their concerns about the connection between file-sharing litigation and abusive litigation tactics.168 One judge described the problem succinctly: “[Plaintiff’s] corporate strategy relies on aggressively suing for infringement and obtaining accelerated discovery of the IP address holder’s identity from the ISP. It then seeks quick, out-of-court settlements which, because they are hidden, raise serious questions about misuse of court procedure.”169 This argument is more persuasive when directed to plaintiffs or law firms with some history of stepping over the line. An attorney for Malibu Media, for example, has been sanctioned for repeatedly including irrelevant information in filings designed to embarrass defendants.170

A strong note of caution is appropriate: Filing a motion to quash may simply put the defendant in the plaintiff’s cross hairs and could actually reduce the chance of a voluntary dismissal. It may also consume defense resources that are better spent elsewhere.

3.     Motion to Proceed Anonymously

At this stage, lawyers should consider whether to file a motion to proceed anonymously. These motions are routinely granted in pornography cases, and we have included a sample in Appendix C.171 There is a presumption in civil litigation that the parties’ identities are public information. However, that presumption, and any prejudice that concealment may cause the opposing party, can be rebutted by a showing that harm to the party seeking to proceed anonymously “exceeds the likely harm from concealment.”172 To that end, a court has a “duty to determine whether exceptional circumstances justify such a departure from the normal method of proceeding in federal courts.”173 Such “exceptional circumstances” are present when anonymity is necessary “to preserve privacy in a matter of sensitive and highly personal nature.”174 This is especially true if the disputed work is pornographic, as “[a]n allegation that an individual illegally downloaded adult entertainment likely goes to matters of a sensitive and highly personal nature, including one’s sexuality.”175

In cases involving pornography, courts have proved receptive to the argument that the Doe defendant would be embarrassed by the litigation and potentially intimidated into settlement if named. Although courts have recognized that plaintiffs have relied on the coercive power of social stigma and tread very close to “extortion” in some cases,176 no finding of bad faith or sharp practice by the plaintiff should be necessary for the court to reach this conclusion. Courts will generally permit defendants to proceed under a pseudonym until the end of all dispositive motions in the case.

4.     Threat Letter

The threat letters sent on behalf of various plaintiffs are all of a piece. We focus here on the standard letter sent by PTG Nevada, as this letter is not materially different from others we have seen.177 The letter informs the defendant that a lawsuit has been filed and his or her information has been obtained from his or her ISP. PTG Nevada’s standard letter states: “Your contact information was supplied to us by your ISP as one of the [d]efendants who has illegally obtained or shared our client’s copyrighted motion picture through a peer-to-peer network . . . .”178

This statement is misleading because the ISP has not identified the account holder as the infringer but has instead merely identified the defendant as the account holder of a given IP address. The standard letter continues:

According to our records, you have placed a media file which contains the copyright-protected film content of our client’s motion picture entitled [name of film] in a shared folder location on your computer . . . . In addition, we have evidence of the P2P client software that you used to obtain or share the film, and evidence of your file hash factor (a mathematical function through which a file can be identified with certainty) which was [a long number, such as A5A78463694R900495034B5B1374A2DEA5133]. We have also obtained the file name of the movie, the file size and the GUID, all corresponding to an IP address that was assigned to your ISP account at the time the infringing activity occurred.179

This letter creates the impression that the plaintiff has detailed knowledge of the inner workings of the defendant’s computer, which is almost certainly untrue. More significantly, these claims of omniscience are difficult to square with the plaintiff’s reluctance to provide such detailed information in the course of discovery. The letter then moves on to explain that copyright infringement is a very serious problem for the entertainment industry and that the law provides various remedies, including attorneys’ fees and statutory damages in the range of $750 to $150,000 per work infringed. The letter then proposes a settlement in the following terms:

In exchange for a comprehensive release of all legal claims which will enable you to avoid becoming a named Defendant in the lawsuit, our firm is authorized to accept the sum of $3,900 as for settlement for its claims. This offer will expire on [a date 14 days after the date of the letter]. Thereafter, our client will accept no less than the sum of $4,900 to settle this matter, but this increased settlement offer will expire on [a date approximately one month from the date of the letter] . . . . If you decide not to settle by [said date], we may add you to the list of Defendants to be served with a copy of the complaint in this lawsuit.180

In short, you can avoid being named as a Defendant in the lawsuit if you act now. You can pay the settlement amount by cashier’s check, money order or by credit card. Please contact us to arrange payment and so we can forward a Release and Settlement Agreement. Once we have processed the settlement, we will confirm that your payment has been processed and that you have been dismissed from the lawsuit.181

The letter then continues that the plaintiff will seek the $30,000 maximum in statutory damages for non-willful infringement and attorneys’ fees and that the plaintiff will attempt to establish willful infringement and thereby seek the maximum statutory damages of $150,000.182 The letter notes that, in Sony BMG Music Entertainment v. Tenenbaum, the plaintiff was awarded $675,000, an amount which breaks down to $22,500 for each song illegally downloaded in that case.183 In short, the threat letter appears to make a compelling case for settling for a few thousand dollars now, rather than tens of thousands or even hundreds of thousands later.

5.     Letter in Response

The plaintiff’s threat letter is primarily a bluff at this stage. The best response to this bluff depends on the client: whether evidence of infringement exists, his or her attitude to risk and uncertainty, financial resources, etc. At a minimum, the response letter should indicate that the defendant understands the weaknesses of the plaintiff’s case, and it should include any specific explanation available as to why the defendant could not or would not have been the infringer. Of course, if the defendant would be absolutely unable to pay any settlement amount and that information can be communicated in a credible manner, this may be the easiest way to discourage the plaintiff from pursuing the case.

B.     Stage II: Amended Compliant, Motion to Dismiss, and Answer

Stage II begins with the plaintiff’s decision to move forward and amend the complaint to name the defendant and ends with: (1) a successful motion to dismiss; (2) a judgment on the pleadings in favor of plaintiff; or (3) the filing of an answer to the complaint. Lawyers could consider representing innocent clients on a pro bono basis or relying on an award of attorneys’ fees to provide compensation for such representation.

1.     Strategic Considerations

The most important strategic considerations at this stage are whether there is incriminating evidence against the defendant, and whether to pursue attorneys’ fees. Contrary to the usual American Rule in civil litigation, the Copyright Act provides that “the court in its discretion may allow the recovery of full costs by or against any party other than the United States” and that “the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.”184 For present purposes, it is sufficient to understand that the defendant is unlikely to be entitled to attorneys’ fees if it files a motion to dismiss and the plaintiff responds with a voluntary dismissal.185 In order to clearly satisfy the statutory requirement of being the “prevailing party,” the defendant seeking reimbursement for attorneys’ fees should file an answer to the complaint. This should be enough to secure prevailing party status. However, some defendants have gone further and made counterclaims for a declaration of noninfringement to stop the plaintiff from wriggling off the hook. We do not recommend a counterclaim in this form; it adds nothing to the denial of infringement and merely invites a tit-for-tat motion to dismiss adding to the cost and complexity of litigation.

The advantage of attorneys’ fees is obvious. However, pursuing attorneys’ fees may make the plaintiff’s attorneys more likely to drag a case out and fight for a draw if they are deprived of the option of simply walking. A motion to dismiss allowing the plaintiff the opportunity to withdraw without additional cost may better serve some clients.

2.     When to Settle and How

Representing defendants with evidence of infringement on their computer hard drive raises some additional strategic questions. Regrettably, some clients will insist on their innocence even in the face of strongly incriminating evidence. Defense lawyers need to know with certainty at some point whether there is incriminating evidence on their client’s hard drive. We believe Stage II is the appropriate time to take that step or, at the very least, get the defendant’s hard drive “imaged,” i.e., copied. If the client’s hard drive is clean, there is almost no reason to settle for anything less than the plaintiff walking away. Lawyers should resist agreeing to nuisance value settlements and settlement agreements that impose gag orders. In our view, the copyright trolling business model has only lasted this long because of information asymmetries. Plaintiffs tend to insist on settlement terms that perpetuate these asymmetries. Thus, while we recognize that lawyers need to act in the best interests of their clients, we are hopeful that, if made aware of this paradigm, clients may wish to consider the social harm of private nuisance value settlements and resist such terms.

If the client’s hard drive is not clean, negotiating a reasonable settlement becomes the top priority. However, lawyers should keep in mind that even these cases could be won on a motion to dismiss that focuses on the plaintiff’s failure to satisfy modern pleading standards. Furthermore, demonstrating a willingness to pursue a motion to dismiss is vital to obtaining a fair settlement. Another prerequisite to obtaining a fair settlement is estimating the client’s potential exposure. This should be the basis of the defendant’s best and final offer position.

We suggest calculating the defendant’s best and final offer position in terms of the plaintiff’s award based on minimum statutory damages, filing fees, and a small allowance for attorneys’ fees. The plaintiff’s business model operates at a very low marginal cost, and prior to discovery there should be almost no costs or attorneys ‘fees specifically attributable to the defendant’s case. To minimize exposure, the defendant should consider making an “Offer of Judgment” under Federal Rule of Civil Procedure 68. Rule 68 provides that an offer of judgment can be made at any time more than 10 days before the trial begins.186 The offer must be definitive, unconditional, in writing, and served upon the plaintiff.187 If the offer is not accepted and “the judgment finally obtained by the offeree is not more favorable than the offer, the offeree must pay the costs incurred after the making of the offer.”188 Ideally this would mean that if the plaintiff rejects an offer of judgment that is more favorable than its eventual recovery, the defendant is entitled to her attorneys’ fees post-offer. However, courts have not always applied Rule 68 this way in copyright cases. At least some circuits hold that a losing copyright defendant cannot recover his attorneys’ fees under Rule 68 because it would contravene the limitation of attorneys’ fees to the “prevailing party” under § 505 of the Copyright Act.189Patry on Copyright acknowledges that this is the majority interpretation, and yet argues that it leads to absurd results and should be rejected.190 We agree. The Eleventh Circuit and one district court have held the defendant in a Rule 68 scenario is entitled to her attorneys’ fees post-offer, so the question remains open.191

Even under the less favorable interpretation of Rule 68, there are significant benefits to making a valid Rule 68 offer of judgment if the plaintiff prevails in an amount less than the offer. In this scenario, “(1) the plaintiff may not collect its post-offer costs or attorneys’ fees, and (2) [the] plaintiff must pay defendant its postoffer costs.”192 

If an offer is to be made, it should be made as early as possible and calculated with the following factors in mind:

Minimum statutory damages ($750 per work)

+

Filing fee of $400

+

$350 for attorneys’ fees.193

In a single-defendant, single-work case, the offer of judgment could be as low as $1,500. Whether to offer anything more than this is a judgment call. The higher the offer, the greater the plaintiff’s risk that at the end of drawn out process it is left with no additional costs or attorneys’ fees. We believe that even at our minimum recommendation there is a substantial risk for the plaintiff here. For example, in Cobbler Nevada, LLC v. Cerritos, the court awarded costs and minimum statutory damages totaling $1275 and declined to award attorneys’ fees.194 Technically, the offer amount could be even lower in a single-work, multiple-defendant case because the filing fee should be split between defendants.195 Appendix D contains a sample offer of judgment.196

3.     The Motion to Dismiss

Copyright trolls rely on generic and boilerplate complaints to cast their net as widely as possible. This is the key to their success, but it is also one of their critical weaknesses. The complaints we have examined tend to be far too vague to satisfy modern pleading standards and should thus be attacked with a Motion to Dismiss for Failure to State a Cause under Federal Rule of Civil Procedure 12(b)(6).

In Twomblyin 2007 and again in Iqbal in 2009, the Supreme Court raised the standard for a well-pleaded complaint,197 requiring that it “contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’”198 We note with interest the efforts of a plaintiff in a recent case to assert that Twombly only requires “fair notice” and “grounds upon which the claim rests.”199 That is precisely the standard in Conley v. Gibson,200 which the Supreme Court renounced in Twombly.201Twombly requires more than fair notice and grounds; a complaint must state sufficient factual context to make the claim plausible, rather than merely possible.202 The Supreme Court in Twombly said that a complaint’s factual details “must be enough to raise a right to relief above the speculative level,” and that “[w]hile a complaint . . . does not need detailed factual allegations, a plaintiff’s obligation to provide the ‘grounds’ of his ‘entitlement to relief’ requires more than labels and conclusions, and a formulaic recitation of a cause of action’s elements will not do.”203

It is true that the compliant does not need to be proven to survive a motion to dismiss, but it must provide a sufficient factual context to suggest that a substantial copy of the copyrighted work at issue was made and that this act was performed by the defendant. The complaints we have reviewed do not allege any evidence that a substantial copy of the copyrighted work was made and have nothing to show that the defendant was the person using the IP address for that purpose. As the court in Cobbler Nevada, LLC v. Gonzales noted, “While it is possible that the subscriber is also the person who downloaded the movie, it is also possible that a family member, a resident of the household, or an unknown person engage[d] in the infringing conduct.”204 Bare possibility clearly falls well below modern pleading standards. The typical complaint alleges only that an unknown device used the defendant’s IP address to participate in a file-sharing swarm and that this swarm unlawfully reproduced and distributed the plaintiff’s copyrighted work. That falls far short of suggesting any facts upon which one could conclude that someone using the defendant’s IP address made a substantial copy of the copyrighted work or that the named defendant was that person.

Plaintiffs appear unwilling to accept that they carry the burden of proof in a claim of copyright infringement and that the defendant is under no obligation to submit evidence she is not liable.205 Defendants in copyright cases do not need to disprove their own liability; a defendant is perfectly entitled to insist on the plaintiff’s filing of a well-pleaded complaint before going to the bother and expense of marshaling evidence of her innocence.

The key arguments to make in a motion to dismiss are:

(1) The plaintiff failed to meet the legal standard. As noted above, in order to survive a Rule 12(b)(6) motion, “a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’”206 As both Twombly and Iqbal recognize, there is a world of difference between alleging facts and circumstances in which the defendant possibly acted unlawfully and alleging facts and circumstances in which the defendant plausibly did so.

(2) The person paying an Internet bill may not be the purported infringer.207 IP addresses are used legitimately and illegitimately by multiple people, and frequently without the account holder’s knowledge.208

(3) Discovery should not be used for fishing expeditions.209 This is particularly significant where the plaintiff admits in its complaint that it intends to use the discovery process to discover “additional infringing parties.”210

(4) Either the plaintiff has failed to allege that an actual copy was made or the plaintiff’s assertions that defendant “infringed” or “reproduced” the work are conclusory and unsupported by any factual allegations. To allege that a device associated with defendant’s IP address participated in a file­sharing swarm is not the same as alleging that a device associated with that address actually made a copy of the work.

(5) Copyright law does not recognize any offense of attempted reproduction. Even if the allegation that defendant participated in a swarm was proven, it would not show that anyone in the swarm—let alone a device associated with the defendant’s IP address or the defendant—actually made a copy. Assertions that the defendant participated in a swarm “deliberately” and “willfully” are entirely beside the point. For copyright infringement to occur, a copy must be made that is substantially similar to the original and able to be viewed by an audience.211

(6) Courts have already rejected attempts to prove infringement by snapshot, wherein the allegation that a defendant made a copy is supported only by the assertion that the defendant transferred certain packets of information. As explained in detail in Part III, the few packets of data recorded by the plaintiff are just a fragment of a piece of a copyrighted work. Those fragments do not meet the statutory definition of a copy, because they are useless junk without the rest of the file. Those fragments also do not meet any of the usual threshold tests for what amounts to a substantial copy. Moreover, a mere snapshot that allegedly shows that the defendant was downloading the copyrighted work does not prove she succeeded.

(7) Complaints vary, but a not uncommon assertion is that the defendant or the defendant’s IP address “was observed” infringing the plaintiff’s copyright. No employee or agent of the plaintiff is described as performing this observation—the passive invocation of “was observed” is used here to elide the fact that no human witness actually saw anything relevant to the plaintiff’s case; the case is entirely reliant on records produced by software. It would thus be more accurate to say that it has software that reports certain events to have occurred, but doing so would invite further questions as to the origin, nature, reliability, and operation of that software—questions that plaintiffs would rather avoid. Advocates should challenge as unacceptably vague, if not misleading, a statement that something was observed, but not by what or by whom.

(8) The lawsuit is part of a broader litigation strategy that relies on the risks of large statutory damages, attorneys’ fees, and the high cost of litigation to coerce innocent defendants into nuisance value settlements.212 Allowing the plaintiff to proceed on factual allegations that are imprecise, incredible, and inconsistent with requirements of the Copyright Act allows it to “tak[e] up the time of a number of other people, with the right to do so representing an in terrorem increment of the settlement value.”213 There is no doubt that online infringement is a problem for the creative industries, but coercing innocent people into settlements and using federal court litigation as a forum for conducting fishing expeditions is not a good answer to that problem.

It is also worth considering the merits of not filing a motion to dismiss, even in the face of a poorly pleaded complaint. Some judges are less receptive to motions to dismiss than others, and assuming there is no smoking gun on the defendant’s hard drive, the same arguments may be more persuasive at the close of discovery. However, in most scenarios, defendants will be well advised to file a motion to dismiss to seek to avoid the significant cost and inconvenience of discovery and depositions.

4.     Motion for Early Discovery

Attorneys should consider a motion for early discovery, with a specific plan in mind.214 This plan has three goals: to prove that the plaintiff does not have the evidence it claims to have; to minimize the client’s discovery burden; and to lay the foundation for a motion for summary judgment. Therefore, any such motion should ask for two things: for the plaintiff to produce the evidence upon which its complaint is based—the PCAPs; and for the defendant to produce a copy of his or her hard drive for examination by a qualified expert—either one agreed to by both parties or one appointed by the court. The motion should ask that searches of the hard drive be limited to searches for the hash value of the file allegedly downloaded or uploaded. Plaintiffs will, in our experience, want to impose a much more burdensome discovery protocol, seeking to depose the defendant’s friends, neighbors, and others who may have used the IP address. This invasive and unwarranted fishing expedition should be resisted.215

Under Rule 26(d), discovery may not be conducted prior to the discovery conference required by Rule 26(f), except “by stipulation, or by court order.”216 Unfortunately, the Federal Rules do not give us any further guidance, and federal courts across the nation have adopted a wide range of standards,217 although most have adopted either a preliminary injunction standard218 or a “good cause” standard.219 Therefore an attorney will need to determine the local standard before pursuing a motion to allow early discovery.

In general, any such motion will need to cover three main points: (1) why the defendant will be irreparably harmed without early discovery; (2) why the plaintiff will not be unduly burdened by early discovery; and (3) why early discovery will be more efficient for the court. These arguments should be made with the defendant’s circumstances in mind, but a few points are common to all file-sharing cases and can be stressed. First, allowing the plaintiff carte blanche access to defendant’s hard drive is incredibly invasive of a person’s personal life,220 and it is deeply unfair to allow plaintiff’s attorneys and experts free reign to search and view every part of the defendant’s hard drive on a bare assertion that someone using defendant’s IP address may have infringed. Thus, a directed discovery plan that only allows plaintiff to search for a specific hash value will greatly reduce the invasiveness of discovery. Second, a directed discovery plan will be cheaper for all involved: Both parties can save money on expert witnesses if the court appoints an expert (for which the parties can split the cost) and the court saves time and resources by keeping discovery disputes and motions to compel to a minimum. Third, unless the plaintiff is able to locate a copy of the disputed work with the hash value it claims to have identified, it cannot connect defendant to the instance of wrongful copying it claims as the basis for its suit.

5.     Answer

If the motion to dismiss is denied, the answer should deny the specific allegation of copyright infringement. The answer could also raise a defense of de minimis non curat lex defense—in essence, that whatever infringement plaintiff can prove is too incomplete for the court to take notice. We do not suggest that file sharing is not a serious problem, but if the only proof the plaintiff offers is that the defendant shared a small piece (or just a fragment of a piece) of the work, there is no proof of infringement.221 This defense should be raised in the context of the plaintiff’s inability to prove or allege that a copyrighted work has been downloaded in its entirety.

In addition, certain affirmative defenses are worth considering. However, opinions differ as to whether adding counterclaims is an effective use of defendant’s resources. Defendants have answered with counterclaims for a declaratory judgment of noninfringement in the past, but we do not recommend them. Counterclaims risk distracting the court from the weakness of the plaintiff’s case. Also, the answer that plaintiff has failed to state a claim can also be couched as an affirmative defense.222 We note, without necessarily recommending, that defendants have also argued that the damages requested are unconstitutionally high223 and that the plaintiff has unclean hands as a result of its unethical, extortionate litigation model.224

6.     How Does Stage II End?

Stage II can end a number of different ways. If the defendant presents the plaintiff with actual evidence of innocence and files a motion to dismiss, we anticipate voluntary dismissal by the plaintiff. In this scenario, the defendant will not be eligible for attorneys’ fees, but the case will be over. Assuming that the plaintiff persists, the complaints that we have reviewed should, in our opinion, be dismissed under 12(b) for their failure to comply with modern pleading standards. In this optimistic scenario, the dismissal should be with prejudice and thus sufficient to support an award of attorneys’ fees to the defendant. However, succeeding on a motion to dismiss is not guaranteed. Recently, in the Northern District of Illinois, for example, nearly identical motions to dismiss were successful in one case and not in another.225

If the defendant’s motion to dismiss is unsuccessful and the defendant’s hard drive contains incriminating evidence, it may be in her best interest to answer the complaint with an admission. The defendant would presumably then file a motion for Judgment on the Pleadings, and the attorney’s role is simply to argue for the minimum award of statutory damages and attorneys’ fees. Almost every case should end at Stage II. However, if the defendant’s motion to dismiss is unsuccessful and the defendant is in possession of a clean hard drive, she will need to proceed to Stage III.

7.     Attorneys’ Fees and Statutory Damages

i.     Attorneys’ Fees

The Copyright Act empowers, but does not require, courts to award costs and attorneys’ fees to the prevailing party in copyright cases—any such award is “a matter of the court’s discretion.”226 The Supreme Court has twice granted certiorari in copyright cases where the prevailing defendant was denied attorneys’ fees. In its unanimous 1994 decision in Fogerty v. Fantasy, Inc., the Court expressly rejected a “dual standard” favoring plaintiffs and disfavoring defendants.227 The text of the Copyright Act provides no basis for preferring prevailing plaintiffs over prevailing defendants; it simply says “prevailing party.”228 Looking beyond the text of the Act, the Court found further support for a unitary standard in the Act’s purpose, recognizing that “[w]hile it is true that one of the goals of the Copyright Act is to discourage infringement, it is by no means the only goal of that Act.”229 As the Court explained, the entirety of the Act reflects Congress’s attempt to create, “a balance of competing claims upon the public interest . . . . The immediate effect of our copyright law is to secure a fair return for an ‘author’s’ creative labor. But the ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good.”230

Yet even after Fogerty, courts in some circuits appeared to carry on a de facto dual standard, denying attorneys’ fees to prevailing defendants as a matter of course.231 The defendant in the long running case of Kirtsaeng v. John Wiley & Sons, Inc., prevailed on the merits on a fairly nuanced point of statutory interpretation regarding the scope of copyright’s first-sale doctrine, but only after appealing to the Supreme Court.232 In spite of this famous victory, the district court (which had sided with the plaintiff in the first instance) denied the defendant’s request for attorneys’ fees, placing “substantial weight” on the objective reasonableness of the plaintiff’s position.233 In doing so, the court may have shaded from substantial weight into presumption. Given that the court agreed with the plaintiff’s position, it is not surprising that it thought it was objectively reasonable. The Second Circuit agreed with the lower court,234 and Kirtsaeng returned to the Supreme Court to argue the point. The Supreme Court vacated and remanded the denial of attorneys’ fees, because, although it agreed that a district court should give substantial weight to the objective reasonableness of the losing party’s position, it insisted that courts must still take into account all other circumstances relevant to granting fees.235

ii.     The Defendant’s Case for Attorneys’ Fees

In Fogerty, the Court explained that “‘[t]here is no precise rule or formula for making these determinations,’ but instead equitable discretion should be exercised.”236 The Court reiterated the point in Kirtsaeng, when it said that district courts have “wide latitude to award attorneys’ fees based on the totality of circumstances in a case.”237 In Fogerty, the Supreme Court accepted in a footnote that the exercise of discretion could be aided with reference to nonexclusive factors, such as “frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and . . . considerations of compensation and deterrence.”238 However, the Court also cautioned that “such factors may be used to guide courts’ discretion, so long as such factors are faithful to the purposes of the Copyright Act and are applied to prevailing plaintiffs and defendants in an evenhanded manner.”239

Whether the prevailing defendant in copyright trolling cases should be entitled to attorneys’ fees is a matter for the district court’s discretion. However, there are several factors that support the appropriateness of exercising that discretion in the defendant’s favor. The business model of copyrighted trolling places no premium on differentiating the guilty from the innocent. In one particularly troubling case, Cobbler Nevada filed against an Internet subscriber that it knew based on depositions was not “a regular occupant of the residence or the likely infringer.”240 As a result, the court had little trouble concluding that its “concerns about the motivation behind Plaintiff’s overaggressive litigation of this case and other cases” was a “factor weigh[ing] in favor of fee shifting.”241 In light of the coercive effect of statutory damages, if prevailing defendants are not entitled to their attorneys’ fees, it is very difficult to see how any innocent defendant would be able to resist a plaintiff’s demands. It stands to reason that attorneys’ fees are most needed to promote the objectives of copyright law when the prevailing party otherwise obtains little in monetary compensation. And of course, the prevailing defendant “receives not a small award but no award” and is thus in the greatest need of attorneys’ fees.242

Given the availability of third-party discovery under Rule 45, there is no reason to tolerate the speculative naming of defendants that is currently the norm in BitTorrent cases. When a copyright troll names a defendant in federal litigation without a sufficient factual basis, its lawsuit is no more meritorious than if it were advancing fanciful legal arguments. The Supreme Court made clear in Fogerty that objective unreasonableness encompasses both factual and legal reasonableness.243 In either case, there is significant public interest in defendants resisting overreaching claims.244 We note that the Ninth Circuit recently upheld a district court’s award of over $5 million in attorneys’ fees to the prevailing defendant in Perfect 10, Inc. v. Giganews, Inc.245 In so doing the court emphasized the Supreme Court’s statement in Fogerty: “[I]t is peculiarly important that the boundaries of copyright law be demarcated as clearly as possible. To that end, defendants who seek to advance a variety of meritorious copyright defenses should be encouraged to litigate them . . . .”246

iii.     Is the Defendant the “Prevailing Party?”

The Copyright Act limits an award of attorneys’ fees to the “prevailing party” but leaves that term undefined.247 While it is self-evident that a party who obtains judgment on the merits of the claim in its favor is the “prevailing party,” the law in relation to dismissals is more nuanced. In Buckhannon Board & Care Home, Inc. v. West Virginia Department of Health & Human Resources, the Supreme Court held that a litigant “prevails” for the purpose of fee-shifting statutes when it obtains a “material alteration of the legal relationship of the parties.”248 This material alteration standard is not met simply by a voluntary change in the other party’s conduct.249 Elaborating on this standard, the Second Circuit has held that to be a prevailing party requires a “judicially sanctioned” material alteration of the legal relationship of the parties.250

Applying this standard, it seems clear that, if the plaintiff voluntarily dismisses an action without prejudice,251 there has been no judicially sanctioned material alteration of the legal relationship of the parties and thus the defendant is not a prevailing party under § 505 of the Copyright Act.252 The plaintiff can only take this course with either: “(i) a notice of dismissal before the opposing party serves either an answer or a motion for summary judgment; or (ii) a stipulation of dismissal signed by all parties who have appeared.”253

The defendant is the prevailing party in any case in which the plaintiff’s action is dismissed with prejudice, whether by court order, at the plaintiff’s own instigation, or by agreement between the parties. If a judge orders dismissal with prejudice, there has clearly been a judicially sanctioned material alteration of the legal relationship of the parties and the defendant is eligible for attorneys’ fees.254 If the plaintiff voluntarily dismisses an action with prejudice, moreover, the resulting material alteration of the legal relationship of the parties is still “judicially sanctioned,” even though such alteration required no ruling from the court.255 The judicial sanction is embedded within the Federal Rules of Civil Procedure themselves.256 As the court summarized in Cobbler Nevada, LLC v. Gonzales:

A plaintiff’s dismissal of a claim does not automatically “confer prevailing party status upon the defendant,” if the defendant remains at risk of plaintiff re-filing the claim. However, if a plaintiff is unable to re-file the dismissed claim in federal court, the defendant is the “prevailing party” on that claim.257

iv.     The Plaintiff’s Case for Attorneys’ Fees

Several district courts have exercised their discretion to deny attorneys’ fees to prevailing plaintiffs in copyright trolling cases.258 There are several reasons for a court to deny the plaintiff’s request for attorneys’ fees. To begin with, an award of even minimum statutory damages and court costs should be sufficient to deter the defendant and third parties from illegally file sharing.259 As the district court explained in Glacier Films (USA), Inc. v. Gallatin,

common sense supports a conclusion that a $750 financial penalty for illegal[ly] downloading one movie is more than sufficiently punitive to deter others from illegally downloading free movies on the BitTorrent network. With knowledge that it will now cost $750 to watch a single movie on the BitTorrent network, consumers should be motivated instead to spend a few dollars to rent the same movie legally.260

Second, as the roughly 10,000 John Doe copyright cases filed between 2010 and 2016 illustrate, plaintiffs have been vigilant and resourceful in policing their copyrights. In Cobbler Nevada, LLC v. Cerritos, the district court required the defendant to pay a total financial penalty of $1,275, comprising $750 in statutory damages and $525 in costs.261 As the court explained:

In light of the substantial financial penalty already imposed, an attorney fee award is not necessary to deter further infringement, nor is a fee award necessary to encourage Plaintiff to continue to protect its rights, where Plaintiff has been vigilant to date and has the resources to police their copyright.262

Third, the plaintiff’s degree of success has been characterized by courts as minimal and insufficient in order to support the plaintiff’s claims for fees several multiples higher.263 Indeed, the Ninth Circuit, in a different copyright context, stated “an award of attorneys’ fees that is ten times the amount recovered in damages seems unreasonable under the circumstances.”264 Of course, attorneys’ fees might be necessary for the plaintiff to be able to vindicate wrongs of nominal monetary damage, but the $750 minimum on statutory damages hardly looks nominal for the pirating of a movie priced at $14.99. Moreover, courts should query exactly why the fees claimed by plaintiffs are so high in many cases. The answer may well be that the plaintiff refused reasonable offers of settlement and deliberately ran up the total of attorneys’ fees. The plaintiff should not be rewarded for its intransigence, nor its attempts to game the system. For example, in Countryman Nevada, LLC v. Doe the district court declined to award attorneys’ fees where the defendant had acknowledged liability early in the case but the plaintiff insisted on a settlement of $8,500.265 Denying plaintiff’s fee motion, the court noted that “it appears to this Court that one of the primary objectives of Plaintiff in undertaking the litigation conduct described was to increase the bases for a prevailing party fee petition.”266 Other courts have noted similar behavior.267 It should be self-evident that prolonging litigation simply to accumulate legal fees is inconsistent with the purposes of the Copyright Act, to say the least.268

Fourth, and most fundamentally, an award of attorneys’ fees in these BitTorrent file-sharing cases will not generally further the purposes of copyright.269 Rather, the prospect of attorneys’ fees simply encourages “the continued overaggressive assertion” of speculative infringement claims.270 In the online file-sharing cases, there is no doubt that infringement is widespread, but there is significant doubt as to the liability of the targeted defendants. The plaintiffs discussed in this Article target hundreds, even thousands, of defendants at a time and pursue them with minimal investigation. The plaintiffs extract settlements from the guilty and innocent alike based on the in terrorem effect of statutory damages and attorneys’ fees.271 Courts have recognized that “the resulting bargaining process is unequal, and unfair.”272 The threat of incurring tens of thousands of dollars of fees makes it hard for even innocent defendants to take the risk of standing up to unreasonable demands. The federal litigation system is not a vending machine for hunting licenses; it is a means of seeking justice and resolving disputes. Courts should be mindful of how copyright owners are using the tools of civil litigation before compounding their reward with attorneys’ fees, and they “should make its tools available only with careful scrutiny, to avoid the potential for abuse.”273

Even if the court does decide to award attorneys’ fees to a plaintiff, the court must ensure that such fees are reasonable, proven, and specifically attributable to the case at hand.274 For plaintiff to file hundreds or even thousands of almost identical complaints and motions and then ask the court to believe that it spent several hours on each one simply beggars belief. Courts in several BitTorrent cases have rejected plaintiffs’ assertions as to their hourly billing rates and the number of hours attributable to any given case.275

v.     Statutory Damages

The choice between actual damages and statutory damages is an easy one for the plaintiff to make in online file-sharing cases.276 Actual damages would be the cost of a legal download—between $12 and $20 based on current iTunes and Amazon prices.277 Statutory damages begin at $750 and could theoretically be as high as $150,000 per work infringed.278 As one of us has discussed at length, statutory damages are a useful part of the copyright ecosystem, where damage is hard to prove or where deterrence is an important consideration.279 However, in the context of individual file sharers, a range beginning at $750 and ending at $30,000 in general—$150,000 in the case of willful infringement—bears no relationship to the harm of infringement, the need for deterrence, or generally accepted norms of proportionality in the administration of penalties.280 Fines for drunk driving (which kills thousands of Americans every year)281 are typically in the high hundreds or low thousands.282 Fines for parking in spaces reserved for the disabled usually range from $100 to $500.283 Like file sharing, these are antisocial activities that may not always be detected and may not result in any harm in any given instance but are harmful in the aggregate. Statutory damages of $750 for individual file sharers still seems high, but it is probably in the right ballpark given the need for deterrence; $30,000 and $150,000 seem absurd.

The most important thing for district courts to understand about the range of statutory damages is that the need for deterrence is already baked into the statutory minimum. Courts should justify any departure from that minimum with case-specific reasons rather than simply pulling multiples out of the air. In addition, although statutory damages relieves plaintiffs of the burden of proving their harm with particularity, the statutory scheme is not an invitation to abandon notions of proportionality altogether.284 District courts have “wide discretion in determining the amount of statutory damages to be awarded,”285 and they ought to take into account whether “the recovery sought is proportional to the harm caused by defendant’s conduct.”286 Courts may even chose to award a single unit of minimum statutory damages to a plaintiff who has alleged that multiple defendants in the same case conspired with one another to infringe the same digital copy of the copyright owner’s work, for which the defendants should be held jointly and severally liable.287 We are not aware of any authority applying such a single satisfaction rule across separately filed cases.

C.     Stage III: Discovery and Summary Judgment

1.     Discovery

Spanning from discovery to summary judgment, Stage III is less-well-charted territory. The most important consideration in this stage is to manage the discovery process. The plaintiff’s most likely strategies are to drag out discovery as long as possible and to attempt to raise the defendant’s costs with spurious motions alleging spoliation and the like. The best response to these tactics is to urge the court to adopt a detailed discovery plan with a clear cutoff date at the outset.

The full scope of discovery in online file-sharing cases could end up being quite broad. Ideally, courts would initially adopt a limited discovery plan as we suggested in Part IV.B.4. The presence of the infringing file or the inadequacy of the PCAP evidence would be an appropriate basis for summary judgment.

In general, defense lawyers will need to make repeated motions to compel the production of relevant evidence under Rule 37. A motion to compel cannot ordinarily be filed unless the opposing party is being evasive or failing to respond to a discovery request,288 so counsel are advised to expect a long haul and to document their requests. In the few cases that have reached this stage, plaintiffs have tried to avoid providing the actual PCAPs upon which they rely, by presenting one or more declarations from witnesses who claim to have analyzed the PCAPs. When presented with a motion to compel, plaintiffs argue that analyzing and extracting the PCAPs is expensive, as the company that does so charges by the hour.289 Plaintiffs have also argued that the evidence they rely upon is not in their possession.290 However, it is well settled that actual possession is not necessary;291 so long as a litigant may “obtain documents on demand,” it must be disclosed.292 The terms “possession, custody, or control” in the Federal Rules are disjunctive.293 Moreover, documents in foreign countries and those subject to confidentiality claims are still discoverable.294 Claims of confidentiality are not sufficient to avoid producing discoverable documents.

The most difficult question for the defense team is how aggressively to scrutinize the plaintiff’s black box process. One strategy is to conserve resources and simply wait to see if the plaintiff offers any admissible evidence on this front. At a minimum, the plaintiff should be required to produce: the source code of the software that records the packets of information it captures;295 an expert to explain how that software works; a fact witness to say how that software was used in practice; and every person involved at every stage of their investigative process. To date, this evidence has never been produced in a satisfactory manner.296

2.     Disqualification of Plaintiff’s Experts

As discussed in Part III, the plaintiffs all rely on expert witnesses who are based overseas. These witnesses, who supposedly identify instances of online infringement, are undoubtedly not mere fact witnesses, yet they may not be experts either. If the plaintiff seeks to rely on evidence about PCAPs without filing a Rule 26 disclosure, the defendant should make a motion to strike.

Under Federal Rule of Civil Procedure 37, a plaintiff’s undisclosed expert testimony should be automatically excluded unless the failure to make a Rule 26 disclosure is substantially justified or harmless.297 In determining whether a failure to disclose is harmless, a court should consider several factors, including “the prejudice or surprise to the party against whom the evidence is offered,” and “the bad faith or willfulness involved in not disclosing the evidence at an earlier date.”298 In Malibu Media, LLC. v. Doe, the court held that a plaintiff’s failure to disclose evidence under Rule 26 was not harmless when the plaintiff’s entire case rested squarely on its experts’ depositions299 referred to earlier and the plaintiff had been reminded multiple times of the need to make expert disclosures.300

Assuming that the plaintiff does make the required Rule 26 disclosure, its evidence should be challenged under a Daubert motion301 on the grounds that it has not produced the data upon which it relied. The trial judge has the authority and duty to act as gatekeeper for expert evidence, allowing only that which is both relevant and reliable.302 This authority extends not merely to scientific evidence but also to technical evidence, as well as “other specialized knowledge [that] will assist the trier of fact,”303 and the judge must determine “whether the reasoning or methodology underlying the [expert’s] testimony is scientifically valid.”304 For evidence from an expert to be admissible, it must be both relevant and reliable.305

Evidence about the plaintiff’s black box is definitely relevant, but the court cannot make a determination of whether it is reliable unless the plaintiff presents the data upon which the expert relies. If the court cannot make this determination, the evidence must be excluded. The plaintiff may argue that it cannot present the PCAP data because it is expensive to retrieve and analyze. But this is not persuasive; the party whose expert is challenged carries the burden of proof—by a preponderance of the evidence—that the expert’s testimony is admissible.306

In addition to being unreliable for not presenting the data relied upon, the plaintiff’s experts may simply be unreliable altogether. In Dallas Buyers Club, LLC v. Doughty, the plaintiff’s expert had no experience with peer-to-peer software and the only support he relied on for his statements about the software at issue was a Wikipedia page.307 The court found his “statements to be highly unreliable” and his testimony was stricken.308 As this incident demonstrates, nothing in these cases should be taken at face value.

3.     Summary Judgment

Eventually discovery will end, and if the plaintiff has not dismissed or settled the case by then, a motion for summary judgment will be appropriate. The issue at summary judgment is whether the plaintiff has proven or can prove by admissible evidence that a defendant copied or distributed its works.309 If the plaintiff cannot, there is no genuine dispute of material fact. As is well known, to survive a motion for summary judgment, the nonmoving party bears the burden310 of producing evidence that a reasonable jury could use “to return a verdict for that party”311 but also enjoys the benefit of the court’s construction of all reasonable and justifiable inferences in its favor.312

The key issue—the presence or absence of the plaintiff’s work on the defendant’s computer—is not simply a matter of opinion. Where the defendant makes a statement of fact that she does not have a copy of the work on any of her devices, the plaintiff cannot simply respond by disputing the fact without any evidence to support the dispute. If forensic discovery shows the file is or was present on the defendant’s computer, the plaintiff meets this burden. If instead the absence of the file is disputed without supporting evidence, the defendant’s denial is considered admitted.313

In the absence of evidence that defendant’s devices contain any copies of the plaintiff’s work, the only evidence the plaintiff could possibly have to rely upon is the defendant’s IP address, which was allegedly used to infringe. But, as we have discussed in detail earlier, an IP address only identifies a location in digital space, not an individual actor.314 Indeed, courts have held that “[e]vidence of a link between an IP address and [the work] may be enough to justify discovery, but it is not enough to prove liability.”315

Moreover, even if evidence linking an IP address to an instance of infringement were enough to prove liability, the typical plaintiff still cannot meet its burden, because the isolated “bits” of the movie that it supposedly received from the defendant’s IP address do not meet the standard for copyright infringement.316 In the cases that we have studied, the plaintiffs have offered declarations that the defendant’s IP address was observed transmitting data with a certain hash value. That hash value, it is alleged, is the same as the hash value of a piece that the witness combined with other pieces to create a file identical to the copyright owner’s work. But note that these other pieces were not downloaded from a device associated with the defendant’s IP address and were instead downloaded from other members of the swarm.317 Moreover, note that these declarations say nothing about the size or contents of the portions of the work actually downloaded from the defendant’s IP address. In essence, the plaintiff can only state truthfully that its software observed the defendant’s IP address transmitting a fraction of the work.318

Evidence that a fragment of a piece of copyrighted work was transmitted is not sufficient evidence for a reasonable jury to rely upon to return a verdict for the plaintiff. As we explained in Part III.B.2, a fragment of piece of file is merely a chunk of useless zeros and ones and thus is not a “copy” as that term is defined by the Copyright Act.319 Furthermore, even if it were a copy in the statutory sense, it still may not meet the threshold of substantial similarity required for copyright infringement. As the Supreme Court noted in Feist Publications, Inc. v. Rural Telephone Service Co., “Not all copying . . . is copyright infringement.”320 Even where the fact of copying is conceded or established, “no legal consequences will follow from that fact unless the copying is substantial.”321

D.     Stage IV: Trial

There is no Stage IV.

Our search of the LexMachina database shows 9,956 file-sharing cases, of which 4,290 were filed in 2015 and 2016 alone.322 Plaintiffs have voluntarily dismissed 7,019 of these cases, with a further 1,240 stipulated dismissals. Defendants have obtained 397 dismissals under Rule 12B(6). Defendants have prevailed in one default judgment and one motion for summary judgment. Working with the LexMachina database, we determined that plaintiffs have obtained 273 default judgments, 120 consent judgments, one favorable summary judgment,323 one judgment on the pleadings,324 and one victory at a bench trial.325 The plaintiffs were not put to proof in any of these cases.

The aforementioned summary judgment and judgment on the pleadings victories came about as follows. In Malibu Media, LLC v. Bui, the plaintiff prevailed on summary judgment because the defendant conceded that he ordered the plaintiffs’ films from KickassTorrents, a website that provided a directory for torrent files to facilitate peer-to-peer file sharing using BitTorrent.326 In spite of this admission, the defendant maintained “the copying and downloading were done by KickAss Torrent, and not by him.”327 In Countryman Nevada v. Doe, the plaintiff obtained Judgment on the Pleadings after the defendant admitted that he used his wife’s computer to participate in peer-to-peer BitTorrent file sharing and to download the plaintiff’s copyrighted work without its knowledge or permission.328

The plaintiff’s bench trial victory hardly merits being labeled as a trial at all. In 2013, Malibu Media, prevailed in a bench trial in the Eastern District of Pennsylvania.329 The trial was framed by the court as a “Bellwether” trial to assess the merits of several Malibu Media cases that had been filed in that district.330 Following expedited pretrial proceedings, the court convened a non-jury trial on June 10, 2013.331 None of the defendants contested liability; indeed, all but one had settled with the plaintiff and were merely used as witnesses for the prosecution.332 Mr. White, the one defendant who had been expected to contest his liability, authorized his counsel at the last minute “to admit that he had downloaded Plaintiff’s copyrighted works, had ‘wiped clean’ his desktop computer and installed a new operating system to conceal the downloading, and had testified falsely at the Rule 104 hearing.”333

The trial, such as it was, was for the purpose of determining the appropriate statutory damages to be assessed against White.334 Even so, it was a surreal affair. White was represented by a criminal defense lawyer with no apparent copyright experience. White’s attorney was not present at the beginning of the trial, asked no questions, and neither examined nor cross-examined witnesses. In fact, he said virtually nothing other than to admit liability on behalf of his client.335

At the trial, one of the principles of Malibu Media, Colette Pelissier-Field, testified about how illegal file sharing affected her business and the difficulty of taking enforcement action against websites that facilitate illegal file sharing.336 She was not cross-examined. No one asked her, for example, how much money Malibu made from file-sharing litigation or why Malibu Media does not use industry standard countermeasures against piracy. Michael Patzer testified that he “designed, created, and implemented” the software used by Malibu’s technology provider, IPP, Ltd., but that he did not work for IPP.337 Patzer explained that he worked for a different company that provides services to IPP, Excipio. He was not cross-examined. Tobias Fieser, an employee of IPP, testified that he verified that the copyright owner’s work was the same as “the BitTorrent that has been downloaded.”338 He was not cross-examined. A consultant named Patrick Paige testified that he conducted certain tests test as to IPP’s IP detection software.339 He was not cross-examined.

In short, to call Malibu Media, LLC v. John Does 1,6,13,14 and 16 a “Bellwether trial”340 is absurd. A trial where liability is admitted, no one is cross-examined, and nothing is contested, is not even a trial in the ordinary sense of the word.

V.     Conclusion

 

We have attempted to provide lawyers with the information essential to defend clients, especially innocent clients, against the claims of copyright trolls. In our opinion, the current model of file-sharing litigation is often both abusive and exploitative. Lawyers have played no small part in bringing about this situation and allowing it to continue. Our hope is that, armed with the information and legal analysis this Article provides, lawyers will find it easier to represent their clients and fight for justice.

However, lawyers are not the only ones with a social and ethical responsibility to take the problem of copyright trolling seriously. District court judges have the inherent authority to control their own proceedings, and significant discretion to supervise discovery and to determine attorneys’ fees and statutory damages. District court judges see individual plaintiffs and defendants; they do not always see the big picture. Those who do have tended to take a more active role in managing these cases from the beginning. We hope that judges will take steps to discourage the abusive use of civil litigation and find ways to manage John Doe copyright litigation in the interests of justice and the goals of copyright.

Finally, no discussion of copyright trolling would be complete without noting the ongoing silence of the U.S. Copyright Office on this issue. The Copyright Office has traditionally been an enthusiastic proponent of statutory damages and has resisted calls for their reform. However, the evidence that statutory damages are being used to harass and intimidate vast numbers of defendants, many of whom have not infringed copyright, is now overwhelming. Acknowledging the problem of copyright trolls may require a more qualified enthusiasm for statutory damages but it is an issue that can no longer be ignored.


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Appendix B: Suggested Talking Points for Client Intake

 

The Accused Infringement

     Have you seen this film ever in any context?

     Where you at home at the time of the alleged infringement?

     Did you do it?

     Do you have any idea who might have done it?

The Household

     Who is in your household?

     Who has access to your household?

     How do you normally watch movies/tv? (e.g., Netflix, cable, Amazon)

Computing Environment

     How many and what devices do you have?

          Desktop

          Laptop

          Tablet

          External hard drives, thumb drives, other plug-in storage

          iPhone (can’t run the BitTorrent client)

          Other brand of smartphone

          Gaming consoles (e.g., PS4, Xbox, etc.)

     What is your internet set-up?

     Do you have wifi?

     Does it have a password? 

     Does it have a guest network?

Knowledge of Computers and BitTorrent

     Do you know what BitTorrent is? 

     Do you use BitTorrent?

     Do you use PopcornTime?

     Do you know what PopcornTime is? 

     How proficient with computers are you?

Information to explain to a new client

     Copyright Basics

     File sharing is illegal, ignorance of the law is no excuse.

     Plaintiff has to show that you did this, not just that your IP address did this.

     Statutory damages and attorneys’ fees.

     How copyright trolling works and options to respond.

     Fee structure and conditions of representation.

 

Appendix C: Sample Motion to Proceed Anonymously 

 

IN THE UNITED STATES DISTRICT COURT

 

FOR THE [ ] DISTRICT OF [ ]

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Now Comes JOHN DOE subscriber assigned to IP Address 24.14.81.195 (“Doe”), [either “pro se” or “by and through counsel,”], who moves this Court for leave to proceed anonymously. In support of his/her Motion Doe states to the Court as follows:

 

I.    Introduction

 

[If the motion is unopposed] Based on [details of communication] on [date], this Motion is unopposed. However, even if unopposed, this Court must still consider the merits of the Motion and consider the harm to the public. Doe v. Smith, 429 F.3d 706, 710 (7th Cir. 2005). Being unopposed, it is respectfully requested that presentment of the Motion be excused unless the Court seeks oral argument.]

 

[Explain who John Doe is general terms]

[Explain who plaintiff is in general nonpejorative terms]

[Explain that plaintiff has accused John Doe of copyright infringement and that John Doe believes that it would be in the interests of justice to allow John Doe to proceed anonymously unless and until the case goes to trial]

 

II.   Argument

 

1. Legal Standard

 

While a party is required to provide both his/her name and “full residence address” in their first filing with the Court, it is within the discretion of the district court to grant the dispensation of anonymity, see United States v. Microsoft, 56 F.3d 1448, 1464 (D.C. Cir. 1995). Despite “this country’s strong tradition of access to judicial proceedings,” there are situations in which “a party’s interest in privacy or confidentiality . . . outweighs this strong presumption in favor of public access.” See Johnson v. Greater Se. Cmty. Hosp. Corp., 951 F.2d 1268, 1277 (D.C. Cir. 1991).

 

2. Shame and Embarrassment to Defendant

 

In many file-sharing cases, courts have recognized that the potential shame and embarrassment of being accused of online piracy is often used as unfair leverage by plaintiffs. See, e.g., Sunlust Pictures v. Does 1-75, No. 12-cv-01546, 2012 WL 3717768, at *5 (N.D. Ill. Aug. 27, 2012) (“Judges within this district have recognized that plaintiffs in these types of cases might unfairly threaten to disclose defendants’ identities in order to improperly leverage settlement negotiations.”) (citing Hard Drive Productions v. Does 1–48, No. 11-cv-00962, 2012 WL 2196038 (N.D. Ill. June 14, 2012). This is especially true when the film defendant is accused of pirating is pornographic; at least one other has court recognized that a fundamental component of the business-litigation model is the fact that “the subscribers, often embarrassed about the prospect of being named in a suit involving pornographic movies, settle.” MCGIP, LLC v. Does 1–149, No. 11-cv-02331, 2011 WL 4352110, at *4 (N.D. Cal. Sept. 16, 2011).

 

Merely being named in a file-sharing case can be damaging. At this point in litigation, plaintiffs have submitted no proof that defendant has committed infringement, and yet because they are accused—and because they have been required to file their correct contact information—their reputations may be at permanent risk. Employers, landlords, and other interested parties can identify defendants through publicly available information, and in some cases such parties conducting a routine search of potential employees or tenants may discover a defendant’s involvement in a file-sharing case entirely by accident. In at least one file-sharing case, a court has sua sponte recognized this danger and ordered that all Doe defendants should proceed anonymously until further notice. See Manny Film, LLC v. Doe, No. 3:15-cv-00103 (S.D. Ohio 2015), ECF No. 7 (order granting John Doe defendant a protective order to proceed anonymously).

 

3. No Harm to the Public

 

An important consideration in whether to grant a motion to proceed anonymously is whether allowing anonymity would harm the public. See Doe v. Smith, 429 F.3d 706, 710 (7th Cir. 2005) (“The public has an interest in knowing what the judicial system is doing, an interest frustrated when any part of litigation is conducted in secret.”). There is no potential for public harm from the granting of this motion, because anonymity will not substantially affect this proceeding. Doe is merely seeking to proceed under a pseudonym until dispositive motions, and aside from this pseudonym, no aspect of litigation will change. Further, Doe is a defendant, inappropriately drug into this embarrassing litigation by Malibu. He is certainly not a plaintiff availing himself of this Court seeking to benefit from this litigation. A similar situation existed in the Malibu Media v. Reynolds case. Malibu Media v. Reynolds, No. 12-cv-06672 (N.D. Ill Mar. 7, 2013), ECF No. 51-11. In that case, involving only the possibility of embarrassment, the Court allowed the Doe to proceed anonymously.

 

III.  Conclusion

 

For the foregoing reasons, Defendant Doe respectfully requests that this Honorable Court grant leave for Doe to proceed anonymously through dispositive Motions in this action, under the pseudonym of Doe [IP address].

 

Respectfully submitted,

[John Doe pro se or counsel details]

 

[Filing certification]

 

Appendix D: Sample Rule 68 Offer of Judgment

 

IN THE UNITED STATES DISTRICT COURT

 

FOR THE [ ] DISTRICT OF [ ]

 Screen Shot 2018 02 05 at 5.46.44 PM 

To: Plaintiff [ ], by and through [plaintiff’s attorney]

 

       Pursuant to Fed. R. Civ P. 68, defendant hereby offers to settle this matter and allow entry of judgment in favor of plaintiff and against defendant (i) in the sum of $[statutory damages], (ii) and $400 the cost of plaintiff’s filing fee, and (iii) injunctive relief as set forth in the addendum hereto, and (iv) legally-recoverable costs and attorneys fees, if any, through the date of service of this Offer of Judgment and to be determined by the court pursuant to Fed. R. Civ P. 54. Noting that in a copyright action, the court “may” award costs and reasonable attorneys fees to the prevailing party, but is not required to do so. See 17 U.S.C. § 505.

Pursuant to Fed. R. Civ P. 68, this Offer of Judgment is not to be construed as an admission for any purpose except in a proceeding to determine attorney’s fees and costs.

If this Offer of Judgment is not accepted within 14 days, it shall be deemed revoked.

 

[Date and signature]

 

PLAINTIFF ACCEPTS/DECLINES Defendant’s Offer Of Judgment.

 

Addendum-injunctive relief

 

Defendant agrees to a permanent injunction enjoining defendant from infringing plaintiff’s rights in plaintiff’s motion picture including, without limitation, by using the Internet to reproduce or copy plaintiff’s motion picture, to distribute plaintiff’s motion picture, automate plaintiff’s motion picture available for distribution to the public, except pursuant to a lawful license or with the express authority of plaintiff, and defendant shall destroy all unauthorized copies of plaintiff’s motion picture in his possession or under her control.

 

[Certificate of Service. . .]

 

Appendix E: Example of PTG Nevada Letter

 

       This example is included so that the reader may judge for herself whether the letter has been accurately quoted, characterized and otherwise described. This critical and illustrative use is well within the parameters of the fair use doctrine as set out in Section 107 of the Copyright Act and interpreted by binding U.S. Supreme Court precedent in Campbell v. Acuff-Rose, 510 U.S. 569 (1994).

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Appendix F: Cases with “Darren M Griffin” Declarations

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  1. [1]. We discuss the data infra Part II. It is enough to note here that copyright lawsuits against John Doe defendants outnumbered all other copyright claims in 29 federal districts in either 2015 or 2016. In 2016, John Doe cases accounted for more than half of copyright cases filed in the following federal districts: Arizona; the Eastern, Northern, and Southern Districts of California; Colorado; Connecticut; District of Columbia; the Northern District of Illinois; the Western District of Kentucky; Maryland; Nevada; New Jersey; the Northern District of New York; the Eastern and Middle Districts of North Carolina; Oregon; the Eastern District of Pennsylvania; the Southern District of Texas; Utah; the Eastern District of Virginia; and the Western District of Washington. In addition to those listed for 2016, John Doe cases accounted for more than half of copyright cases filed in the Middle District of Florida, the Eastern and Western Districts of Michigan, the Eastern and Southern Districts of New York, the Northern and Southern Districts of Ohio, and the Middle District of Pennsylvania in 2015.

  2. [2]. See, e.g., Complaint for Injunctive Relief, Damages and Profits for Copyright Infringement; and Demand for Jury Trial at 1, Dig. Sin, Inc. v. Does 1–5698, No. 11-cv-04397, 2011 WL 4048465 (N.D. Cal. Sept. 2, 2011) (naming 5,698 John Doe defendants); Complaint for Copyright Infringement at 1, Ott v. Does 1–15,551, No. 1:11-cv-00553, 2011 WL 2491677 (D.D.C. Mar. 11, 2011) (naming 15,551 John Doe defendants).

  3. [3]. The term “Potemkin Village” is derived from the sham villages created in 18th-century Russia to impress Empress Catherine II on her tours of the country. See Thomas Seifrid, “Illusion” and Its Workings in Modern Russian Culture, 45 Slavic & E. Eur. J.205, 205 (2001).

  4. [4]. For districts in which file-sharing cases against John Doe defendant outnumber other copyright cases, see supra note 1. There are 15 districts in which cases by the top six plaintiffs—Malibu Media, LLC; LHF Productions, Inc.; Manny Film, LLC; Cobbler Nevada, LLC; Plastic The Movie, Ltd; and Dallas Buyers Club, LLC—outnumber all other copyright suits for 2015 and 2016 combined. These districts are the Eastern, Northern, and Southern Districts of California; the District of Columbia; the Northern District of Illinois; Maryland; the Eastern and Western Districts of Michigan; New Jersey; the Northern District of New York; the Northern and Southern Districts of Ohio; the Eastern and Middle Districts of Pennsylvania; and the Eastern District of Virginia.

  5. [5]. See generally Matthew Sag, Copyright Trolling, an Empirical Study, 100 Iowa L. Rev. 1105 (2015).

  6. [6]. Id.

  7. [7]. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 963 (2005) (Breyer, J., concurring).

  8. [8]. Annemarie Bridy, Why Pirates (Still) Won’t Behave: Regulating P2P in the Decade After Napster, 40 Rutgers L.J. 565, 602 (2009) (quoting Press Release, RIAA, Recording Industry Begins Suing P2P File Sharers Who Illegally Offer Copyrighted Music Online (Sept. 8, 2003), http://tech-insider.org/internet/research/2003/0908.html).

  9. [9]. Administrative Office of the U.S. Courts, PACER records, 1994–2016 (on file with the authors); see also Sag, supra note 5, at 1116 (explaining methodology used to collect and analyze the records); Matthew Sag, IP Litigation in U.S. District Courts: 1994–2014, 101 Iowa L. Rev. 1065, 1070–71 (2016) (explaining methodology and updating analysis of copyright data in the context of broader trends in IP litigation).

  10. [10]. See Sarah McBride & Ethan Smith, Music Industry to Abandon Mass Suits, Wall St. J., http://online.wsj.com/articles/SB122966038836021137 (last updated Dec. 19, 2008, 12:01 AM).

  11. [11]. We invoke the triad of plaintiffs, lawyers, and litigation service providers to reflect our uncertainty as to whether the true principals directing the current wave of John Doe are the named plaintiffs, their lawyers, or the litigation service providers who claim to identify supposed instances of copyright infringement.

  12. [12]. On February 8, 2016, the court granted the defendant’s motion for summary judgment in Malibu Media LLC v. John Doe, No. 1:13-cv-06312, 2016 WL 464045 (N.D. Ill. Feb. 8, 2016). This appears to have precipitated a dispute between Malibu Media and its main litigation counsel. See Complaint at 1, Malibu Media, LLC v. Lipscomb, Eisenberg & Baker, PL, No. 2:16-cv-04715-R-FFM (C.D. Cal. June 28, 2016) (alleging professional negligence and other causes of action).

  13. [13]. Administrative Office of the U.S. Courts, PACER records, 2010–2016 (on file with the authors); see supra note 9.

  14. [14]. See supra note 2 and accompanying text.

  15. [15]. See, e.g., Complaint, Dall. Buyers Club, LLC v. Does 1–56, No. 1:14-cv-07044 (N.D. Ill. Sept. 11, 2014); First Amended Complaint, Voltage Pictures, LLC v. Doe No. 1, No. 6:14-cv-00816-MC, 2014 WL 8333643 (D. Or. June 20, 2014); Complaint for Copyright Infringement, Countryman Nev., LLC v. Does 1–50, No. 1:14-cv-01384, 2014 WL 916205 (N.D. Ill. Feb. 26, 2014).

  16. [16]. Data on file with authors.

  17. [17]. By running an algorithm over the entire set of cases, we are able to determine that, at a minimum, over 170,000 IP addresses have been targeted since 2010. However, this figure significantly undercounts the number of defendants because it only accounts for the number disclosed by the plaintiff in the title of the case. For example, some cases are captioned “Some Film, LLC v. John Does 1–76” while some cases are captioned simply “Some Film, LLC v. John Does,” and we were unable to inspect each record to determine the true number of defendants.

  18. [18]. An IP address is an identifier assigned to a device connected to a TCP/IP network. The IP addresses discussed in this Article are most often connected to the routers that connect consumer Internet access accounts to the Internet.

  19. [19]. An ISP is an organization that provides services for accessing and using the Internet.

  20. [20]. Contact does not mean serve a summons. In fact, plaintiffs often go out of their way to delay formal service of process until the court runs out of patience.

  21. [21]. Prior to May 1, 2013, filing fees were $350, at which time they were increased to $400. Based on the PACER records, we calculate that Malibu’s initial filing fees for 2012 to 2016 would have been $2,355,100.

  22. [22]. See infra Part IV.D.

  23. [23]. We spoke to several defense lawyers over the past two years, and their experiences have informed our research. However, these conversations were conducted in confidence, and we cannot report what we were told beyond this general summary.

  24. [24]. Compare Sag, supra note 5 (arguing that copyright’s statutory damages regime encourages opportunistic litigation), with Shyamkrishna Balganesh & Jonah B. Gelbach, Debunking the Myth of the Copyright Troll Apocalypse, 101 Iowa L. Rev. Online 43, 44 (2016) (arguing that file-sharing litigation is simply another form of aggregate litigation and is no different to similar suits in antitrust, securities litigation, drug and medical device liability, and mass accidents). See generally James DeBriyn, Shedding Light on Copyright Trolls: An Analysis of Mass Copyright Litigation in the Age of Statutory Damages, 19 UCLA Ent. L. Rev. 79 (2012) (arguing that statutory damages create perverse incentives in the copyright context); Brad A. Greenberg, Copyright Trolls and Presumptively Fair Uses, 85 U. Colo. L. Rev. 53 (2014) (discussing problems created by copyright trolls); Jason R. LaFond, Personal Jurisdiction and Joinder in Mass Copyright Troll Litigation, 71 Md. L. Rev. Endnotes 51 (2012) (discussing procedural aspects of copyright trolling).

  25. [25]. Professor Sag includes himself in this criticism.

  26. [26]. Robert Layton & Paul Watters, Internet Commerce Sec. Lab., Investigation into the Extent of Infringing Content on BitTorrent Networks 3, 21 (2010), https://concen.org/old
    forum/attachment.php?aid=4190 (concluding that 97.9% of nonpornographic files distributed via BitTorrent tracker websites were infringing copyright).

  27. [27]. This point was made most famously in Malibu Media, LLC v. Doe, where Judge Wright commented that “[t]he federal courts are not cogs in a plaintiff’s copyright-enforcement business model. The Court will not idly watch what is essentially an extortion scheme, for a case that plaintiff has no intention of bringing to trial.” Malibu Media, LLC v. John Does 1–10, No. 2:12-cv-003623-OD-PJWx, 2012 WL 5382304, at *4 (C.D. Cal. June 27, 2012). More recently, Judge Alsup noted that even with single-defendant cases “[t]he damages exposure in this case, as with Malibu Media’s many other cases, is significant, so a defendant may feel pressure to settle even a meritless case. Coupled with the taboo nature of the subject matter, there remains potential for abuse.” Malibu Media, LLC v. John Doe, No. 3:15-cv-04441-WHA, 2016 WL 3383758, at *3 (N.D. Cal. June 20, 2016); see also Malibu Media LLC v. John Doe, No. 3:13-cv-00205, 2013 WL 4821911, at *1 (W.D. Wis. Sept. 10, 2013) (sanctioning Malibu Media attorney Schulz for “attaching an apparently unrelated and embarrassing” material to the plaintiff’s complaints); Sunlust Pictures, LLC v. Does 1–75, No. 1:12-cv-01546, 2012 WL 3717768, at *5 (N.D. Ill. Aug. 27, 2012) (“Judges within this district have recognized that plaintiffs in these types of cases might unfairly threaten to disclose defendants’ identities in order to improperly leverage settlement negotiations.”); Hard Drive Prods. v. Does 1–48, No. 1:11-cv-09062, 2012 WL 2196038, at *6 (N.D. Ill. June 14, 2012) (warning plaintiff to consider Rule 11 before naming defendant who disputed that he had illegally downloaded pornographic movie).

  28. [28]. See infra Appendix A (listing top plaintiffs for the 2015–2016 period).

  29. [29]. Dallas Buyers Club was nominated for six Oscars. Dallas Buyers Club: Awards, IMDB, http://www.imdb.com/title/tt0790636/awards (last visited Oct. 28, 2017). London Has Fallenhas a Rotten Tomatoes critics rating of 25%. London Has Fallen, Rotten Tomatoes, https://www.rottentomatoes.com/m/london_has_fallen (last visited Oct. 28, 2017).

  30. [30]. See, e.g., Amended Complaint for Copyright Infringement at 2, PTG Nev., LLC v. Chan, No. 1:16-cv-01621, 2016 WL 8541574 (N.D. Ill. Jan. 29, 2016) (pleading the use of geolocation technology).

  31. [31]. Gary Gygax, Advanced Dungeons & Dragons: Monster Manual 97 (4th ed. 1979), http://archmagev.com/1st_Ed/Rulebooks/AD&D%201st%20-%202009%20-%20Monster%20
    Manual.pdf.

  32. [32]. J.K. Rowling, Harry Potter and the Half-Blood Prince 177 (2005).

  33. [33]. Copyright Act, 17U.S.C. §106(1) (2012).

  34. [34]. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).

  35. [35]. See Declaration of J. Christopher Lynch in Support of Defendant’s Reply Memorandum in Support of His Motion to Compel at 3, Elf-Man, LLC v. Lamberson, No. 2:13-cv-00395-TOR (E.D. Wash. July 3, 2014) (citing Complaint at 7–8, Vision Films Inc. v. Does 1–41, No. 3:13-cv-00128, 2013 WL 1100187 (E.D. Tenn. Mar. 8, 2013)) (stating that, at the time of the litigation, the copyright was owned by a third party).

  36. [36]. See Complaint—Demand for Jury Trial, Malibu Media, LLC v. John Doe, No. 15-cv-04441, 2015 WL 6471355 (N.D. Cal. Sept. 27, 2015). As a starting point, we suggest a brief check of the copyright status of the registration on the U.S. Copyright Office website. Public Catalog, U.S. Copyright Off., http://cocatalog.loc.gov/cgi-bin/Pwebrecon.cgi?DB=local&PAGE (last visited Oct. 28, 2017).

  37. [37]. See Mitchell Bros. Film Grp. v. Cinema Adult Theater, 604 F.2d 852, 861 (5th Cir. 1979) (“Requiring authors of controversial, unpopular, or new material to go through judicial proceedings to validate the content of their writings is antithetical to the aim of copyrights.”).

  38. [38]. See Malibu Media, LLC v. Doe, No. 15-cv-04369-AKH, 2015 WL 4092417, at *4 (S.D.N.Y. July 6, 2015) (noting that “if the Motion Picture is considered obscene, it may not be eligible for copyright protection” (quoting Next Phase Distrib., Inc. v. John Does 1–27, 284 F.R.D. 165, 171 (S.D.N.Y. 2012))).

  39. [39]. See Miller v. California, 413 U.S. 15, 26 (1973).

  40. [40]. Indictment, United States v. Hansmeier, No. 16-cr-00334-JNE-KMM, 2016 WL 7403809 (D. Minn. Dec. 14, 2016). John L. Steel has now plead guilty to these charges. See Plea Agreement and Sentencing Stipulations, Hansmeier, 16-cr-00334-JNE-KMM (Mar. 6, 2017); see also Lightspeed Media Corp. v. Smith, 761 F.3d 699, 712 (7th Cir. 2014) (affirming orders for sanctions and an order holding Duffy, Steele, and Hansmeier in civil contempt); Lightspeed Media Corp. v. Smith, No. 3:12-cv-00889-GPM, 2013 WL 6225093, at *4 (S.D. Ill. Nov. 27, 2013) (stating that “the Court has no doubt that Duffy, Steele, and Hansmeier are closely associated and acted in concert to file and prosecute this frivolous lawsuit”); Ingenuity 13 LLC v. John Doe, No. 2:12-cv-08333-ODW-JCx, 2013 WL 1898633, at *2, 3, 5 (C.D. Cal. May 6, 2013) (finding that “the Principals engaged in vexatious litigation designed to coerce settlement” and that “Plaintiffs have demonstrated their willingness to deceive not just this Court, but other courts where they have appeared” and awarding sanctions against lawyers Steele, Hansmeier, Duffy and Gibbs, the Prenda Law Firm, and their clients, AF Holdings and Ingenuity 13, based on the “Plaintiffs’ brazen misconduct and relentless fraud”).

  41. [41]. See Ingenuity 13 LLC, 2013 WL 1898633, at *4.

  42. [42]. Id.

  43. [43]. Id. at *1.

  44. [44]. Cyrus Farivar, Prenda Seeded Its Own Porn Files via BitTorrent, New Affidavit Argues, Ars Technica (June 3, 2013, 8:15 PM), https://arstechnica.com/tech-policy/2013/06/prenda-seeded-its-own-porn-files-via-bittorrent-new-affidavit-shows.

  45. [45]. See, e.g., Declaration of Delvan Neville at 11, First Time Videos, LLC v. Oppold, No. 6:12-cv-01493-CEH-KRS (M.D. Fla. June 3, 2013), ECF No. 37-11.

  46. [46]. See Fed. R. Civ. P. 20(a).

  47. [47]. Bram Cohen, The BitTorrent Protocol Specification, BitTorrent.org (Feb. 4, 2017, 12:58 PM), http://www.bittorrent.org/‌beps/bep_0003.html.

  48. [48]. Malibu Media, LLC v. Reynolds, No. 1:12-cv-06672, 2013 WL 870618, at *2 (N.D. Ill. Mar. 7, 2013).

  49. [49]. Id. at *2.

  50. [50]. Id. at *1–2.

  51. [51]. Id. at *1.

  52. [52]. Id. at *2.

  53. [53]. Malibu Media, LLC v. John Does 1–68, No. 12-cv-06675, 2013 WL 5423872, at *4–5 (N.D. Ill. Sept. 27, 2013).

  54. [54]. See Declaration of Expert Delvan Neville at ¶9, Dall. Buyers Club, LLC, v. Does 1–20, No. 1:14-cv-01142-WTL-MJD (S.D. Ind. Oct. 21, 2014) (“[T]he average peer contacts only 0.61% of the total number of swarm participants over the course of their time in the swarm, with a standard deviation of 1.35%. This indicates that a typical peer contacts only a sliver of all swarm participants, and while this distribution is also highly variable, 95% of swarm participants would have contacted between just a single peer to a maximum of 3.247%.”).

  55. [55]. Id.

  56. [56]. Fed. R. Civ. P. 20(a)(2)(A).

  57. [57]. Id. R. 20(a)(2)(B).

  58. [58]. LaFace Records, LLC. v. Does 1–38, No. 5:07-cv-298-BR, 2008 WL 544992, at *2 (E.D.N.C. Feb. 27, 2008).

  59. [59]. See, e.g., SBO Pictures, Inc. v. Does 1–57, No. 8:12-cv-00022, 2012 WL 1415523, at *2 (D. Md. Apr. 20, 2012) (denying joinder); Patrick Collins, Inc. v. John Does 1–23, No. 11-cv-15231, 2012 WL 1019034, at *4 (E.D. Mich. Mar. 26, 2012) (severing the Doe defendants because the infringement of the film via BitTorrent did not constitute a “series of transactions or occurrences”); SBO Pictures, Inc. v. Does 1–3036, No. 11-4220 SC, 2011 WL 6002620, at *3 (N.D. Cal. Nov. 30, 2011) (severing Doe defendants because defendants did not satisfy test for permissive joinder); MCGIP, LLC v. Does 1–149, No. 11-cv-02331-LB, 2011 WL 4352110, at *3 (N.D. Cal. Sept. 16, 2011) (finding misjoinder where plaintiff “has failed to show that any of the 149 Doe defendants actually exchanged any piece of the seed file with one another”); Hard Drive Prods., Inc. v. Does 1–188, 809 F. Supp. 2d 1150, 1165 (N.D. Cal. 2011) (finding no concerted action where plaintiff conceded that defendants “may not have been physically present in the swarm on the exact same day and time”); Boy Racer, Inc. v. Does 1–60, No. 11-cv-01738-SI, 2011 WL 3652521, at *4 (N.D. Cal. Aug. 19, 2011) (severing defendants where plaintiff did “not plead facts showing that any particular defendant illegally shared plaintiff’s work with any other particular defendant”).

  60. [60]. See reFX Audio Software Inc. v. Does 1–85, No. 1:13-cv-01790, 2014 WL 1293816, at *5 (N.D. Ill. Mar. 24, 2014) (granting dismissal for improper joinder) (“This application of ‘series’ of transactions or occurrences is at too high a level of generality, sweeping in Does who are multiple (maybe even hundreds or thousands of) levels away from Doe 1. All told, [plaintiff] is treating the 459 downloads/uploads that would be depicted in the diagram as one transaction or occurrence, or one series of transactions or occurrences.” (footnote omitted)).

  61. [61]. Id. at *6 (“A plaintiff may only join as defendants those swarm members who have directly exchanged a part of a copyrighted work (identified by the same unique hash identifier) with one particular individual. In other words, a plaintiff can join with any one alleged infringer all the other alleged infringers who downloaded content directly from or uploaded content directly to that same infringer.”).

  62. [62]. See Interscope Records v. Does 1–25, No. 6:04-cv-00197-Orl-22DAB, 2004 WL 6065737, at *1 (M.D. Fla. Apr. 1, 2004), report and recommendation adopted, 2004 WL 7078585 (M.D. Fla. Apr. 27, 2004) (recommending sua sponte that multiple defendants be severed because the only connection between them was the allegation that they used the same ISP and same file-sharing network to infringe); see also UMG Recordings, Inc. v. Does 1–51, No. A-04-CA-704-LY (W.D. Tex. Nov. 17, 2004) (dismissing all but the first named defendant in four separate file-sharing cases with a total of 254 defendants); Twentieth Century Fox Film Corp. v. Does 1–12, No. 04-cv-04862 WHA, 2004 WL 3241669, at *1 (N.D. Cal. Nov. 16, 2004) (staying discovery on all but the first named defendant in file-sharing case until proper joinder was demonstrated); BMG Music v. Does 1–203, No. Civ.A. 04-650, 2004 WL 953888, at *1 (E.D. Pa. Apr. 2, 2004) (severing the improper joinder of 203 defendants).

  63. [63]. See, e.g., Bicycle Peddler, LLC v. Does 1–12, 295 F.R.D. 274, 277 (N.D. Ill. 2013); Pac. Century Int’l v. Does 1–31, No. 11-cv-09064, 2012 WL 2129003, at *2 (N.D. Ill. June 12, 2012) (allowing joinder where “the anonymous defendants participated in the same ‘swarm’”); Patrick Collins, Inc. v. Does 1–39, No. 12-cv-00096-AW, 2012 WL 1432224, at *3 (D. Md. Apr. 24, 2012); Dig. Sin, Inc. v. Does 1–176, 279 F.R.D. 239, 244 (S.D.N.Y. 2012); First Time Videos, LLC v. Does 1–76, 276 F.R.D. 254, 257 (N.D. Ill. 2011).

  64. [64]. TCYK, LLC v. Does 1–62, No. 13-cv-03842, 2013 WL 6671675, at *3 (N.D. Ill. Dec. 18, 2013) (“Every member of a swarm joins that cooperative endeavor knowing that, in addition to downloading the file, they will also facilitate the distribution of that identical file to all other members of the swarm.” (quoting TCYK, LLC v. Does 1–87, No. 13-cv-03845, 2013 WL 3465186, at *4 (N.D. Ill. July 10, 2013))).

  65. [65]. Federal Rules of Civil Procedure 21 provides that the court may add or drop a party on motion or on its own “on just terms.” Fed. R. Civ. P. 21. The court may also sever any claim against a party. See, e.g., Patrick Collins, Inc. v. Does 1–38, 941 F. Supp. 2d 153, 156–57 (D. Mass. 2013) (finding that, although “joinder of the defendants may be permissible under Fed.R.Civ.P. 20(a), the interests of justice and judicial economy would best be served if all of the defendants except Doe Number 1 were severed and dropped from the case pursuant to Fed.R.Civ.P. 21”).

  66. [66]. Call of the Wild Movie, LLC v. Does 1–1,062, 770 F. Supp. 2d 332, 344 (D.D.C. 2011) (“[P]laintiffs would face significant obstacles in their efforts to protect their copyrights from illegal file-sharers and this would only needlessly delay their cases. The plaintiffs would be forced to file 5,583 separate lawsuits, in which they would then move to issue separate subpoenas to ISPs for each defendant’s identifying information.”). Note this reasoning has most likely been reversed by the holding in AF Holdings, LLC v. Does 1–1058, 752 F.3d 990 (D.C. Cir. 2014).

  67. [67]. Third Degree Films, Inc. v. Does 1–131, 280 F.R.D. 493, 499 (D. Ariz. 2012) (“[T]he Court would effectively sever these cases for trial, and conduct over a hundred separate trials with different witnesses and evidence, eviscerating any ‘efficiency’ of joinder.”); see also Malibu Media, LLC v. Doe, No. 12-cv-06945, 2013 U.S. Dist. LEXIS 44053, at *4 (D.N.J. Mar. 28, 2013) (stating that its “ability to efficiently manage the pretrial phases of this action with the present number of defendants could be compromised by permitting joinder, causing a strain on judicial resources”); Bubble Gum Prods., LLC v. Does 1–80, No. 12-cv-20367, 2012 WL 2953309, at *5 (S.D. Fla. July 19, 2012) (stating that “the sheer number of [d]efendants ... would cause an overly burdensome discovery process if [d]efendants remain joined”).

  68. [68]. Third Degree Films v. Does 1–47, 286 F.R.D. 188, 189–91 (D. Mass. 2012) (“In recent months, this Court has grown increasingly troubled by ‘copyright trolling,’ specifically as it has evolved in the adult film industry.... Against this backdrop of mass lawsuits and potentially abusive litigation tactics, courts nationwide have become skeptical of allowing the adult film companies unfettered access to the judicial processes of subpoenas and early discovery.” (footnote omitted)); see also Patrick Collins, Inc., 941 F. Supp. 2d at 156–57 (recommending that plaintiff’s claims against defendants other than the first named John Doe be dismissed without prejudice); Kick Ass Pictures, Inc. v. Does 1–25, No. 12-cv-10810-MLW, 2013 WL 1497229, at *1–2 (D. Mass. Jan. 4, 2013) (ordering plaintiff to show cause why its claims against defendants other than the first named John Doe defendant should not be dismissed without prejudice to being refiled as individual cases); Pac. Century Int’l Ltd., 2011 WL 5117424, at *2 (denying motion for expedited discovery and severing defendants other than the first named John Doe defendant).

  69. [69]. Third Degree Films, 286 F.R.D. at 190; see also Hard Drive Prods., Inc. v. Does 1–90, No. 11-cv-03825-HRL, 2012 WL 1094653, at *7 (N.D. Cal. Mar. 30, 2012) (“Plaintiff seeks to enlist the aid of the court to obtain information through the litigation discovery process so that it can pursue a non-judicial remedy that focuses on extracting ‘settlement’ payments from persons who may or may not be infringers. This the court is not willing to do.”).

  70. [70]. Fed. R. Civ. P. 12(h)(1)(B).

  71. [71]. Id. R. 12(b)(2).

  72. [72]. Id. R. 12(b).

  73. [73]. Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463 (1940)). Note that personal jurisdiction always exists in the defendant’s domicile. Goodyear Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915, 924 (2011) (“For an individual, the paradigm forum for the exercise of general jurisdiction is the individual’s domicile ... .”).

  74. [74]. See, e.g., AF Holdings, LLC v. Does 1–1058, 752 F.3d 990, 996 (D.C. Cir. 2014) (“[W]e think it quite obvious that AF Holdings could not possibly have had a good faith belief that it could successfully sue the overwhelming majority of the 1,058 John Doe defendants in this district.”).

  75. [75]. An assertion that is terribly vague considering the various meanings that could be ascribed to geolocation and the varieties of geolocation technology available.

  76. [76]. See, e.g., Malibu Media, LLC v. John Doe, No. 3:16-cv-442 (S.D. Cal. May 2, 2016), ECF No. 5; Malibu Media, LLC v. Doe, Docket No. 3:16-cv-00447 (S.D. Cal. April 26, 2016), ECF No. 5 (order denying motion for early discovery); Malibu Media, LLC v. John Doe, No. 3:15-cv-02931 (S.D. Cal. Mar. 17, 2016) (order denying plaintiff’s ex parte motion for leave to serve a third-party subpoena).

  77. [77]. See, e.g., Malibu Media, LLC v. John Doe, No. 16-cv-01006-WHA, 2016 WL 3383830, at *4 (N.D. Cal. June 20, 2016) (staying compliance with third-party subpoena); In re Malibu Media Adult Film Copyright Infringement Cases, No. 2:15-cv-03504 (E.D.N.Y. Oct. 6, 2015) (staying court’s previous order pending resolution of defendant’s motion to quash).

  78. [78]. Kashmir Hill, How an Internet Mapping Glitch Turned a Random Kansas Farm into a Digital Hell, Splinter (Apr. 10, 2016, 10:00 AM), http://splinternews.com/how-an-internet-mapping-glitch-turned-a-random-kansas-f-1793856052.

  79. [79]. See Matthew Tanase, IP Spoofing: An Introduction, Symantec, https://www.symantec.
    com/‌connect/‌articles/‌ip-spoofing-introduction (last updated Mar. 11, 2003).

  80. [80]. Dan Goodin, How I Cracked My Neighbor’s WiFi Password Without Breaking a Sweat, Ars Technica (Aug. 28, 2012, 9:46 AM), https://arstechnica.com/information-technology/2012/
    08/wireless-password-easily-cracked (describing the ease with which one can crack WiFi passwords using widely available tools).

  81. [81]. See Swati Khandelwal, Hacker Selling over 1 Million Decrypted Gmail and Yahoo Passwords on Dark Web, Hacker News (Mar. 06, 2017), http://thehackernews.com/2017/03/gmail-yahoo-password-hack.html (noting that in 2016 billions of accounts were compromised and exposed on the Internet after hacks of LinkedIn, Tumblr, MySpace, Last.FM, Yahoo!, and VK.com).

  82. [82]. Thomas Fox-Brewster, Shockingly Simple Flaw Leaves ‘Millions of Home Routers Open to Attack, Forbes (May 19, 2015, 10:26 AM), https://www.forbes.com/sites/thomasbrewster/
    2015/05/19/home-routers-vulnerable-to-netusb-attack.

  83. [83]. Indeed, with the advent of technologies such as smart-home lighting, temperature control, and garage-door control, those seeking to exploit technology are faced with a growing number of opportunities for infiltration.

  84. [84]. See generally Anirudh Ramachandran & Nick Feamster, Understanding the Network-Level Behavior of Spammers, SIGCOMM’06, Sept. 11–16, 2006 (discussing IP spoofing in the context of spam email).

  85. [85]. Lucian Constantin, BiTorrent Programs Can Be Abused to Supercharge Denial-of-Service Attacks, PCWorld (Aug. 17, 2015, 8:56 AM), http://www.pcworld.com/article/2971892/security/bittorrent-programs-can-be-abused-to-amplify-distributed-denialofservice-attacks.html.

  86. [86]. See Expert Report of Bradley Witteman at 23–24, Malibu Media v. John Doe, No. 3:15-cv-04441-WHA, 2017 WL 2987894 (N.D. Cal. Feb. 2, 2017).

  87. [87]. Id. at 24.

  88. [88]. This is a fake, randomly-generated IP address. See IP Address Generator—Test Data Generation, FYIcenter, http://sqa.fyicenter.com/‌Online_Test_Tools/‌Test_IP_Address_Generator.php (last visited Oct. 28, 2017).

  89. [89]. See Malibu Media v. John Doe, No. 1:13-cv-06312, 2016 WL 464045, at *7 n.5 (N.D. Ill. Feb. 8, 2016) (observing that “[e]vidence of a link between an IP address and Malibu’s movies may be enough to justify discovery, but it is not enough to prove liability”).

  90. [90]. See, e.g., PTG Nev. v. Chan, No. 16-cv-01621, 2017 WL 168188, at *2 (N.D. Ill. Jan. 17, 2017) (“This Court agrees with those courts that have found that the plaintiff needs to allege more than just the registration of an IP address to an individual in order to proceed against that individual for copyright infringement.”); Cobbler Nev. v. Gonzales, No. 3:15-cv-00866-SB, 2016 WL 3392368, at *3 (D. Or. June 8, 2016) (dismissing claim where plaintiff did not allege specific facts tying defendant to infringing conduct); Dall. Buyers Club v. Doughty, No. 3:15-cv-00176-AC, 2016 WL 1690090, at *11 (D. Or. Apr. 27, 2016) (“To show the defendant himself violated the plaintiff’s exclusive rights and not someone else, the plaintiff must provide more than the mere fact that the IP address associated with the infringing activity is registered to the plaintiff.”); Elf-Man, LLC v. Cariveau, No. 13-cv-00507-RSL, 2014 WL 202096, at *2 (W.D. Wash. Jan. 17, 2014) (dismissing direct infringement claim where plaintiff did not “provide specific facts tying the named defendant to the infringing conduct,” and instead merely alleged that the defendant’s IP address “was observed infringing Plaintiff’s motion picture”); AF Holdings LLC v. Rogers, No. 12-cv-01519-BTM-BLM, 2013 WL 358292, at *2 (S.D. Cal. Jan. 29, 2013) (“[J]ust because an IP address is registered to an individual does not mean that he or she is guilty of infringement when that IP address is used to commit infringing activity.”); In re BitTorrent Adult Film Copyright Infringement Cases, 296 F.R.D. 80, 84 (E.D.N.Y 2012) (“[I]t is no more likely that the subscriber to an IP address carried out...the purported illegal downloading...than to say an individual who pays the telephone bill made a specific telephone call.”).

  91. [91]. See Dall. Buyers Club, 2016 WL 1690090, at *11 (“[Plaintiff]’s attempt to liken a shared Internet bill to a scenario in which an individual or entity knowingly received financial benefits in exchange for the availability of infringing activity would be an unwarranted extension of the Copyright Act.”).

  92. [92]. See Countryman Nev., LLC v. Pitts, No. 6:14-cv-00493-Orl-40GJK, 2014 WL 7178077, at *2 (M.D. Fla. Dec. 16, 2014) (collecting cases holding that bare factual allegations are sufficient to survive a Rule 12(b)(6) motion to dismiss).

  93. [93]. See, e.g., Dall. Buyers Club, 2016 WL 1690090, at *4 (opinion and order denying in part and granting in part defendant’s motion for summary judgment).

  94. [94]. See Fed. R. Evid. 404(a)(1).

  95. [95]. See, e.g., Dall. Buyers Club, 2016 WL 1690090, at *4.

  96. [96]. See, e.g., Brief in Opposition to Defendant’s Motion for Summary Judgment at 2, Malibu Media, LLC. v. Doe, No. 1:13-cv-06312 (N.D. Ill. Apr. 20, 2015).

  97. [97]. Nation-wide Check Corp. v. Forest Hills Distribs., Inc., 692 F.2d 214, 218 (1st Cir. 1982) (“The evidentiary rationale [for the spoliation inference] is nothing more than the common sense observation that a party who has notice that [evidence] is relevant to litigation and who proceeds to destroy [evidence] is more likely to have been threatened by [that evidence] than is a party in the same position who does not destroy the [evidence].”).

  98. [98]. See Dall. Buyers Club, 2016 WL 1690090, at *7 (“[Plaintiff] does not indicate when it believes [Defendant] allegedly deleted the folder used to store and share downloaded files on his computer. Indeed, the only evidence in the record comes from [Defendant], who states he used BackBlaze and Apple software to restore his laptop in January 2015 and this may have resulted in a loss of data not subject to backup.”).

  99. [99]. See id. (“[T]here is no indication, and [Plaintiff] has provided none, that [Defendant] was on notice that litigation against him was likely to commence when he allegedly destroyed the evidence on his laptop that could be relevant to this litigation. While [Plaintiff] may argue the Comcast e-mails [Defendant] received in 2014 should have put him on notice of potential copyright-infringement litigation, the e-mails provide no indication litigation was imminent; in fact, they made no mention of litigation at all. Moreover, there is no indication in the record [Defendant] received an e-mail pertaining to the specific copyrighted work at issue in this case, Dallas Buyers Club. Thus, [Defendant] had no notice litigation was likely to be commenced; he therefore had no duty to protect potential evidence contained on his laptop.”).

  100. [100]. See Malibu Media, LLC v. Doe, 82 F. Supp. 3d 650, 658 (E.D. Pa. 2015) (“[Plaintiff] of course has no standing to complain of alleged infringement of works to which it does not hold the copyrights. Because the alleged spoliation is not relevant to [Plaintiff]’s claims in this case...we hold there has been no actual suppression of relevant evidence....”).

  101. [101]. Our understanding is that an agent of the plaintiff joins a BitTorrent swarm and sends out requests for pieces of the target file. The agent receives pieces, but any request made to the agent’s software to send a piece of the file is rejected.

  102. [102]. For this illustration, we used the text of the Gettysburg Address at, Abraham Lincoln, The Gettysburg Address, EServer http://history.eserver.org/‌gettysburg-address.txt (last visited Oct. 28, 2017), and an online hash value generator, MD5 Hash Generator, Dan’s Tools, http://www.md5hashgenerator.com (last visited Oct. 28, 2017).

  103. [103]. WORM stands for Write Once Read Many and describes a data storage device in which information, once written, cannot be modified.

  104. [104]. Cohen, supra note 47 (“[P]iece lengthis almost always a power of two, most commonly 2 [to the power of] 18 = 256 K (BitTorrent prior to version 3.2 uses 2 [to the power of] 20 = 1 M as default).”).

  105. [105]. See Expert Report of Bradley Witteman, Malibu Media, LLC v. John Doe, No. 3:15-cv-04441-WHA, 2017 WL 2987894, at *37 (N.D. Cal. Feb. 2, 2017), ECF No. 144-5; Elf-man, LLC v. Lamberson, No. 2:13-cv-00395-TOR, 2014 WL 11513119, at *4 (E.D. Wash. Oct. 31, 2014).

  106. [106]. Declaration of J. Christopher Lynch in Support of Defendant’s Motion for Attorney’s Fees, Elf-man, LLC v. Lamberson, No. 13-CV-0395-TOR, (E.D. Wash. August 11, 2014), ECF No. 95.

  107. [107]. Id.

  108. [108]. Id.

  109. [109]. See, e.g., Declaration of Plaintiff’s Expert at 4–5, Malibu Media LLC v. John Doe, 1:13-cv-06312, (N.D. Ill. Sept. 4, 2013) (describing the use of expensive WORM drives to store investigation data).

  110. [110]. See, e.g., City Yellow Lights Too Short, Judge Says Before Tossing Red Light Tickets, Expired Meter (Aug. 12, 2014), http://theexpiredmeter.com/2014/08/city-yellow-lights-too-short-judge-says-before-tossing-red-light-tickets (illustrating notice of violation).

  111. [111]. Cohen, supra note 47.

  112. [112]. See, e.g., Ingenuity 13 LLC v. Doe, No. 2:12-cv-08333-ODW-JC, 2013 WL 765102, at *3 (C.D. Cal. Feb. 7, 2013) (“This snapshot allegedly shows that the Defendants were downloading the copyrighted work—at least at that moment in time. But downloading a large file like a video takes time ... . In fact, it may take so long that the user may have terminated the download. The user may have also terminated the download for other reasons. To allege copyright infringement based on an IP snapshot is akin to alleging theft based on a single surveillance camera shot: a photo of a child reaching for candy from a display does not automatically mean he stole it. No Court would allow a lawsuit to be filed based on that amount of evidence.”); see also Malibu Media, LLC v. John Doe, 82 F. Supp. 3d 650, 658 (E.D. Pa. 2015) (“As to the snippet of ‘Good Night Kiss,’ ...[i]t is not a copy of the work itself. Our Court of Appeals’s ‘substantial similarity’ test obliges us to determine whether Doe copied from the plaintiff’s work and whether the copying, if proven, constitutes an improper appropriation. Here we determine as a matter of law that there was no improper appropriation because no reasonable jury, properly instructed, could find that the data snippet bears a ‘substantial similarity’ to Malibu Media’s copyrighted work.”).

  113. [113]. Copyright Act, 17 U.S.C § 106(1) (2012) (emphasis added).

  114. [114]. Id. §101 (emphasis added).

  115. [115]. See, e.g., Hamil Am., Inc. v. GFI, 193 F.3d 92, 100 (2d Cir. 1999) (“In most cases, the test for substantial similarity is the ‘ordinary observer test,’ which queries whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.”).

  116. [116]. Ingenuity 13 LLC, 2013 WL 765102, at *3.

  117. [117]. 17U.S.C§101 (emphasis added).

  118. [118]. See infra Appendix A (listing plaintiffs filing 10 or more John Doe suits in 2015 and 2016).

  119. [119]. It might seem that Killer Joe Nevada, LLC is the exception to this rule. Killer Joe Nevada, LLC has obtained early discovery without providing any underlying declaration in several cases. See, e.g., Plaintiff’s Ex Parte Motion to Expedite Discovery, Killer Joe Nev., LLC v. Doe, No. 3:15-cv-01772 (D. Or. Sept. 18, 2015), ECF No. 3. In other cases, Killer Joe Nevada relied on “Darren M. Griffin” of Crystal Bay Corp.

  120. [120]. See infra notes 121–32 and accompanying text.

  121. [121]. See, e.g., Declaration of Darren M Griffin in Support of Plaintiff’s Motion for Leave to Take Discovery Prior to Rule 26(f) Conference at 1, Zambezia Film (Pty,) Ltd. v. Does 1–37, No. 1:13-cv-00392-WYD-MEH (D. Colo. Feb. 13, 2013). We have included a list of 485 such cases, sorted by district, in Appendix F. See infra Appendix F.

  122. [122]. See Declaration of J. Christopher Lynch in Support of Defendant’s Motion for Rule 11 Sanctions at 10, Elf-Man, LLC v. Lamberson, No. 2:13-cv-00395 (E.D. Wash. July 21, 2014), ECF No. 81. Over 190 Declarations of a “Darren M. Griffin” have been filed in multiple Districts on behalf of multiple BitTorrent plaintiffs. See infra Appendix F.

  123. [123]. See Declaration of Daniel Macek in Support of Plaintiff, Countryman Nevada, LLC’s, Motion for Leave to Serve Non-Party Subpoena Prior to Rule 26(f) Conference at 1, Countryman Nev., LLC v. Doe 38, No. 8:14-cv-00761-JDW-TBM (M.D. Fla. Apr. 8, 2014), ECF No. 6-2; Declaration of Daniel Macek in Support of Plaintiff’s Motion for Leave to Take Discovery Prior to Rule 26(f) Conference at 1, Dall. Buyers Club, LLC v. Does 1–39, No. 1:14-cv-02153 (N.D. Ill. Apr. 7, 2014).

  124. [124]. Declaration of Daniel Macek in Support of Plaintiff’s Motion for Leave to Take Discovery Prior to Rule 26(f) Conference, Automata Prods., Inc. v. Does 1–19, No. 1:15-cv-06423 (N.D. Ill. Aug. 6, 2015); Declaration of Daniel Macek in Support of Plaintiff’s Motion for Leave to Take Discovery Prior to Rule 26(f) Conference, Clear Skies Nev., LLC, v. Does 1–30, No. 1:15-cv-05736 (N.D. Ill. July 16, 2015).

  125. [125]. Declaration of Tobias Fieser at 1, Malibu Media, LLC v. Bui, 1:13-cv-00162-RJJ (W.D. Mich. May 14, 2014).

  126. [126]. Ben Grubb, Pirate Hunter Daniel Macek’s Evidence, Integrity Under Fire in Australian Landmark Web Piracy Case, Sydney Morning Herald (Feb. 18, 2015), http://www.smh.com.au/digital-life/digital-life-news/pirate-hunter-daniel-maceks-evidence-integrity-under-fire-in-australian-landmark-web-piracy-case-20150217-13hlnd.html.

  127. [127]. See, e.g., Declaration of Daniel Arheidt in Support of Plaintiff’s Motion for Leave to Take Discovery Prior to Rule 26(f) Conference at 1, Criminal Prods., Inc. v. Does 1–22, No. 2:16-cv-01968-RFB-CWH (D. Nev. Aug. 20, 2016).

  128. [128]. See, e.g., Affidavit of Daniel Arheidt, Malibu Media, LLC v. Doe, No. 1:14-cv-00223 (D. Md. Jan. 27, 2014).

  129. [129]. See, e.g., Declaration of Daniel Arheidt in Support of Plaintiff’s Motion for Leave to Take Discovery Prior to Rule 26(f) Conference, Nu Image, Inc. v. Does 1–6,500, No. 1:11-cv-00301-RLW (D.D.C. Feb. 17, 2011).

  130. [130]. Declaration of J. Christopher Lynch in Support of Defendant’s Motion for Attorney’s Fees, supra note 106, at 20.

  131. [131]. Complaint at 5, Davis v. Crowell, No. 37-2017-00024909-CU-BT-CTL (Cal. Super. Ct. July 03, 2017).

  132. [132]. Id. at 4.

  133. [133]. The plaintiff in Malibu Media, LLC. v. Doe, No. 1:13-cv-06312 (N.D. Ill. 2016) responded to an interrogatory on this issue as follows:


    IPP International UG, is a fact witness who will testify that its technology detected that a person using Defendant’s IP address was downloading and distributing Plaintiff’s copyrighted works. Pursuant to an oral contingency fee agreement, IPP International UG is entitled to a small portion of the proceeds from the resolution of this case in consideration for the services it provides.

    Motion to Bar Testimony of IPP International UG and for an Order Requiring Malibu to Show Cause Why It and Its Counsel Should Not Be Sanctioned Pursuant to § 1927 & This Court’s Inherent Authority at 6, Malibu Media, LLC. v. John Doe, No. 1:13-cv-06312 (N.D. Ill. Sept. 4, 2013), ECF No. 27.

  134. [134]. Crowe v. Bolduc, 334 F.3d 124, 132 (1st Cir. 2003); see also 33A Federal Procedure, Lawyers Edition § 80:369 (2017) (“In order to avoid even the potential for bias, a contract to give evidence for a compensation contingent upon the outcome of the case is illegal.”).

  135. [135]. In re Joy Recovery Tech. Corp., 286 B.R. 54, 69 (Bankr. N.D. Ill. 2002).

  136. [136]. To see just how murky the black box is, take for example Michael Patzer. Patzer has been a key witness for Malibu Media, and he apparently wrote the software that various plaintiffs rely upon. In a Malibu Media, LLC v. Doe case filed in Maryland, Patzer identifies himself as an employee of IPP Limited. However, when Malibu’s counsel suggested that, “you don’t actually work for IPP, Limited. You said you work for a firm that provides these services to IPP, Limited, correct?” Patzer agreed. Nonetheless, he continued to refer to IPP as “we” throughout his deposition. See ISP Subscriber’s Reply in Support of Motion for an Order to Show Cause as to Why All Evidence and Data from Tobias Fieser and His Company IPP Should Not Be Precluded and These Cases Dismissed at 14, Malibu Media, LLC v. John Doe, No. 1:14-cv-00223-MJG (D. Md. Jan. 27, 2014), ECF No. 27. More confusing still, in Malibu Media, LLC v. John Doe, No. 15-cv-3504 (JFB)(SIL), 2016 BL 273204, at *3 (E.D.N.Y. Aug. 23, 2016), Michael Patzer is described as “Senior Assistant Architect for the German copyright infringement detection firm Excipio,” but in Malibu Media, LLC v. John Doe, No. 13-cv-6312, 2016 BL 34458, at *3 (N.D. Ill. Feb. 8, 2016), he is “Excipio’s independent contractor, Mr. Michael Patzer.”

  137. [137]. See Response to: Plaintiff’s Notice Advising that Record Expert Evidence from Patrick Paige Explains PCAP Computer Files at 2, Malibu Media, LLC. V. Doe, No. 1:13-cv-06312 (N.D. Ill. February 8, 2016), ECF No. 174 (“Mr. Paige asserts he inspected IPP’s software, not the Excipio software used in this case.”).

  138. [138]. See id. (“Moreover, Paige cannot provide sufficient foundation for any PCAPs involved in this case. Otherwise editable PCAPs are kept on WORM drives that Malibu does not have and will not bring to trial. ECF Doc 100-2, p. 2 (WORM drives are not in Malibu’s control and none will be presented as evidence at trial). Nothing indicates Paige has seen the PCAPs involved in this case.”).

  139. [139]. See id. (“Finally, nothing in Patrick Paige’s Curriculum Vitae suggests or intimates that he is an expert in networking protocols governing the transfer of data on the Internet. Indeed, the opposite is true.”).

  140. [140]. Patzer was deposed for the first time on October 13, 2016. See Exhibit 24 Transcript of the Deposition of Michael Patzer on October 13, 2016 at 1, Malibu Media, LLC v. Doe, No. 3:15-cv-04441-WHA (N.D. Cal. Feb. 2, 2017), ECF No. 144-24.

  141. [141]. Notice of Appeal by Defendant Leo Pelizzo at 4, Malibu Media LLC v. Pelizzo, No. 14-11795, 604 Fed. App’x 879 (11th Cir. 2015) (defendant tendered evidence that he was out of the country at the time of alleged infringement).

  142. [142]. See, e.g., Malibu Media LLC. v. John Doe, No. 1:13-cv-06312, 2016 WL 464045, at *4 (N.D. Ill. Feb. 8, 2016) (“[The expert] also states that he has testified ‘as a fact witness’ in a trial of consolidated cases for Malibu, and that he is not paid by Malibu for his testimony.”).

  143. [143]. There are significant obstacles to deposing a witness in Germany under the Hague Convention on the taking of Evidence Abroad in Civil or Commercial Matters of 1970. Hague Convention on the Taking of Evidence Abroad in Civil or Commercial Matters, opened for signature Mar. 18, 1970, 23 U.S.T. 2555, 847 U.N.T.S. 231.

  144. [144]. Malibu Media LLC, 2016 WL 464045.

  145. [145]. Id. at *5.

  146. [146]. Federal Rules of Civil Procedure 26(a)(2) requires a formal disclosure of any witness who is to give testimony based on scientific, technical, or otherwise specialized knowledge. Fed. R. Civ. P. 26(a)(2).

  147. [147]. Malibu Media LLC, 2016 WL 464045, at *9 (emphasis added).

  148. [148]. Id. at *10 (emphasis added).

  149. [149]. See Exhibit 5 Expert Report of Bradley Witteman, December 15, 2016, Malibu Media, LLC v. Doe, No. 3:15-cv-04441-WHA, 2016 WL 3383758 (N.D. Cal. June 20, 2016), ECF No. 144-5.

  150. [150]. Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 589 (1993).

  151. [151]. Id. at 593–94.

  152. [152]. See Latonia Haney Keith, Poverty, the Great Unequalizer: Improving the Delivery System for Civil Legal Aid, 66 Cath. U. L. Rev. 55, 66 (2016).

  153. [153]. In a conversation with one of the authors, one defense attorney, when presented with exactly this fact pattern, said, “I could get you a pretty good settlement, maybe $1,500 or so.”

  154. [154]. See infra Appendix B.

  155. [155]. See Fed. R. Civ. P. 45(c)(3)(A).

  156. [156]. Id. R. 26(d)(l).

  157. [157]. See Arista Records LLC v. Doe 3, 604 F.3d 110, 119 (2d Cir. 2010) (holding that five factors to consider in a determination of whether good cause exists are “(1) [the] concrete[ness of the plaintiff’s] showing of a prima facie claim of actionable harm,...(2) [the] specificity of the discovery request, ...(3) the absence of alternative means to obtain the subpoenaed information, ...(4) [the] need for the subpoenaed information to advance the claim,...and (5) the [objecting] party’s expectation of privacy” (quoting Sony Music Entm’t Inc. v. Does
    1–40, 326 F. Supp. 2d 556, 564–65 (S.D.N.Y. 2004))).

  158. [158]. For an example, see Malibu Media, LLC v. John Doe, No. 1:14-cv-20213-UU, 2014 U.S. Dist. LEXIS 185324, at *4–5 (S.D. Fla. Mar. 4, 2014) (inference that account holder is infringer or is able to identify infringer is not sufficient to grant subpoena); the opposite inference is made every time a judge grants a subpoena based on an IP address.

  159. [159]. See, e.g., Order and Opinion at 9, Malibu Media, LLC v. John Doe, No. 1:15-cv-04369-AKH, 2015 WL 4092417, at *4 (S.D.N.Y. July 6, 2015); VPR Internationale v. Does 1–1017, No. 11-cv-02068, 2011 WL 8179128, at *1–2 (C.D. Ill. Apr. 29, 2011) (“IP subscribers are not necessarily copyright infringers.... The infringer might be the subscriber, someone in the subscriber’s household, a visitor with her laptop, a neighbor, or someone parked on the street at any given moment.”).

  160. [160]. See, e.g., Declaration of Patrick Paige at 2, Good Man Prods., Inc. v. John Doe, No. 2:14-cv-07902-SRC-CLW (D.N.J Dec. 22, 2014).

  161. [161]. See, e.g., Memorandum and Order, Malibu Media, LLC v. Doe, No. 1:15-cv-01883-LTS-KNF (S.D.N.Y. June 5, 2015), ECF No. 20.

  162. [162]. Order and Opinion at 10, Malibu Media, LLC v. Doe, No. 1:15-cv-04369-AKH (S.D.N.Y. July 6, 2015).

  163. [163]. Malibu Media, LLC v. Does 1–10, No. 2:12-cv-03623-ODW-PJWx, 2012 WL 5382304, at *3 (C.D. Cal. June 27, 2012).

  164. [164]. For discussion of the merits of joinder, see supra Part III.A.3.

  165. [165]. See, e.g., Elf-man, LLC v. Lamberson, No. 13-cv-0395-TOR, 2014 WL 11513119, at *8 (E.D. Wash. Oct. 31, 2014).

  166. [166]. For the reasons addressed supra Part III.A.3.

  167. [167]. For the reasons discussed supra Part III.A.4.

  168. [168]. See In re BitTorrent Adult Film Copyright Infringement Cases, 296 F.R.D. 80, 89 (E.D.N.Y. 2012) (“The most persuasive argument against permitting plaintiffs to proceed with early discovery arises from the clear indicia...that plaintiffs have employed abusive litigations tactics to extract settlements from John Doe defendants.”); Patrick Collins, Inc. v. John Does
    1–37, No. 2:12-cv-01259-JAM-EFB, 2012 WL 2872832, at *3 n.2 (E.D. Cal. July 11, 2012) (observing that the federal courts are not flexible enough to be shaped into “cogs in a plaintiff’s copyright-enforcement business model” and admonishing that “[t]he Court will not idly watch what is essentially an extortion scheme, for a case that [P]laintiff[s] ha[ve] no intention of bringing to trial.”); Malibu Media, LLC v. John Does 1–5, No. 12-cv-02950-JPO, 2012 WL 2001968, at *1 (S.D.N.Y. June 1, 2012) (“This Court shares the growing concern about unscrupulous tactics used by certain plaintiffs, particularly in the adult films industry, to shake down the owners of specific IP addresses from which copyrighted adult films were allegedly downloaded.”); Dig. Sins, Inc. v. John Does 1–245, No. 11-cv-08170-CM, 2012 WL 1744838, at *3 (S.D.N.Y. May 15, 2012) (“In these BitTorrent cases ... numerous courts have already chronicled abusive litigation practices.”); SBO Pictures, Inc. v. Does 1–20, No. 12-cv-03925-SAS, 2012 WL 2034631, at *1 (S.D.N.Y. June 5, 2012) (“[E]arly discovery has been used repeatedly in cases such as this one to harass and demand of defendants quick settlement payments, regardless of their liability.”); Dig. Sin, Inc. v. Does 1–176, 279 F.R.D. 239, 242 (S.D.N.Y. 2012) (“[P]laintiffs have used the offices of the Court as an inexpensive means to gain the Doe defendants’ personal information and coerce payment from them. The plaintiffs seemingly have no interest in actually litigating the cases, but rather simply have used the Court and its subpoena powers to obtain sufficient information to shake down the John Does.” (quoting Memorandum Order at 4,
    K-Beech, Inc. v. Does 1–85, No. 11-cv-00469-JAG (E.D. Va. Oct. 5, 2011), ECF No. 9)).

  169. [169]. Malibu Media, LLC v. Doe, No. 1:15-cv-04369-AKH, at 7 (S.D.N.Y. Jan. 28, 2016) (order denying leave to serve a third-party subpoena).

  170. [170]. Id. at 8 (“[A] district court sanctioned [plaintiff] when it learned that [it] did not even own the copyrights for the titles [included as exhibits in the complaint]; rather, it had gratuitously listed them to coerce larger, faster settlements....” (citing Malibu Media LLC v. John Doe, No. 3:13-cv-00205, 2013 WL 4821911, at *4 (W.D. Wis. Sept. 10, 2013))); Malibu Media, LLC v. John Doe, No. 2:13-cv-00536, 2013 WL 6579338, at *4 (E.D. Wis. Dec. 12, 2013).

  171. [171]. See infra Appendix C.

  172. [172]. Jane Doe v. City of Chicago, 360 F.3d 667, 669 (7th Cir. 2004).

  173. [173]. John Doe v. Blue Cross & Blue Shield United of Wis., 112 F.3d 869, 872 (7th Cir. 1997) (citing United States v. Microsoft Corp., 56 F.3d 1448, 1463–64 (D.C. Cir. 1995) (per curiam)).

  174. [174]. Does 1–23 v. Advanced Textile Corp., 214 F.3d 1058, 1068 (9th Cir. 2000) (quoting James v. Jacobson, 6 F.3d 233, 238 (4th Cir. 1993)).

  175. [175]. Third Degree Films v. Does 1–3577, No. 11-cv-02768-LB, 2011 WL 5374569, at *4 (N.D. Cal. Nov. 4, 2011).

  176. [176]. For judicial condemnation of “what is essentially an extortion scheme” and similar statements, see supra note 27.

  177. [177]. See infra Appendix E.

  178. [178]. Defendant’s Rule 12(b)(6) Motion to Dismiss Exhibit B at 27-1, PTG Nev., LLC v. Does 1–24, No. 1:16-cv-01621 (N.D. Ill. Sept. 13, 2016).

  179. [179]. Id.

  180. [180]. Id.

  181. [181]. Id. at 27-2.

  182. [182]. Id.

  183. [183]. Sony BMG Music Entm’t. v. Tenenbaum, 660 F.3d 487, 490 (1st Cir. 2011).

  184. [184]. Copyright Act, 17U.S.C. §505 (2012).

  185. [185]. See infra Part IV.B.7.

  186. [186]. Fed. R. Civ. P. 68.

  187. [187]. Id.

  188. [188]. Id.

  189. [189]. Copyright Act, 17U.S.C. §505 (2012); Harbor Motor Co. v. Arnell Chevrolet-Geo, Inc., 265 F.3d 638 (7th Cir. 2001); see also Crossman v. Marcoccio, 806 F.2d 329 (1st Cir. 1986).

  190. [190]. William F. Patry, 6 Patry on Copyright §22:218 (2017).

  191. [191]. Jordan v. Time, Inc., 111 F.3d 102, 105 (11th Cir. 1997) (copyright case); see also Lucas v. Wild Dunes Real Estate, Inc., 197 F.R.D. 172, 178 (D.S.C. 2000) (awarding attorneys’ fees); cf. Utility Automation 2000, Inc. v. Choctawhatchee Elec. Co-op., 298 F.3d 1238, 1246 n.6 (11th Cir. 2002) (noting criticism of Jordan).

  192. [192]. Patry, supra note 190, §22:218.

  193. [193]. Copyright Act, 17U.S.C. §504 (2012). As far as we know, Malibu Media is the only plaintiff currently targeting defendants for the alleged infringement of multiple copyrighted works. This makes Malibu Media cases more difficult to settle.

  194. [194]. Cobbler Nev., LLC v. Cerritos, No. 3:15-cv-01228-SB, 2016 WL 7177527, at *5 (D. Or. Dec. 9, 2016).

  195. [195]. LHF Prods., Inc. v. Doe 1, No. 2:16-cv-01017 (W.D. Wash. June 30, 2016) (granting in part plaintiff’s motion for default judgment); see infra Part IV.B.7.v.

  196. [196]. The appendix is based on the Offer of Judgment in Cobbler Nevada, LLC, v. Cerritos, No. 3:15-cv-01228-SB, 2016 WL 7177527 (D. Or. Dec. 9, 2016).

  197. [197]. Ashcroft v. Iqbal, 556 U.S. 662 (2009); Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007).

  198. [198]. Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 570).

  199. [199]. See Plaintiff’s Response to Defendant’s Rule 12(b)(6) Motion to Dismiss at 2, PTG Nev., LLC. v. Chan, No. 1:16-cv-01621, 2016 WL 8541547 (N.D. Ill. Jan. 17, 2017) (“Plaintiff’s Complaint states a claim upon which relief can be granted. A complaint must contain a ‘short and plain statement’ giving ‘the defendant fair notice’ of what the ‘claim is and the grounds upon which it rests.’” (quoting Twombly, 550 U.S. at 554–56)).

  200. [200]. Conley v. Gibson, 355 U.S. 41, 45–46 (1957) (stating that a complaint “should not be dismissed for failure to state a claim unless it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief”).

  201. [201]. See Twombly, 550 U.S. at 563 (“But the passage so often quoted [referring to the passage in Conley above] fails to mention this understanding on the part of the Court, and after puzzling the profession for 50 years, this famous observation has earned its retirement.”).

  202. [202]. See id. at 570.

  203. [203]. Id. at 545 (citations omitted).

  204. [204]. Cobbler Nev., LLC v. Gonzales, No. 3:15-cv-00866-SB, 2016 WL 3392368, at *3 (D. Or. June 8, 2016).

  205. [205]. See, e.g., Plaintiff’s Response in Opposition to Defendant’s Motion for Summary Judgment at 1, Dall. Buyers Club, LLC. v. Doughty, 3:15-cv-00176-AC, 2016 WL 6831278 (D. Or. Jan. 14, 2016) (“Defendant submits no evidence that he is not liable beyond his personal denials.”).

  206. [206]. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Twombly, 550 U.S. at 570).

  207. [207]. See VPR Internationale v. Does 1–1017, No. 11-cv-02068, 2011 WL 8179128, at *2 (C.D. Ill. Apr. 29, 2011) (“Where an IP address might actually identify an individual subscriber and address[,] the correlation is still far from perfect.... The infringer might be the subscriber, someone in the subscriber’s household, a visitor with her laptop, a neighbor, or someone parked on the street at any given moment.”); Malibu Media, LLC v. Reynolds, No. 12-cv-06672, 2013 WL 870618, at *13 (N.D. Ill. Mar. 7, 2013); TCYK, LLC v. Doe, No. 13-cv-03828, 2013 U.S. Dist. LEXIS 88402, at *6 (N.D. Ill. June 24, 2013) (“[T]he increasing ubiquity of wireless networks undermines the copyright holder’s assumption that the ISP subscriber is the copyright infringer.”); see also In re BitTorrent Adult Film Copyright Infringement Cases, 296 F.R.D. 80, 84 (E.D.N.Y. 2012) (“[I]t is no more likely that the subscriber to an IP address carried out...the purported illegal downloading...than to say an individual who pays the telephone bill made a specific telephone call.”).

  208. [208]. See supra Part II.A.

  209. [209]. Pac. Century Int’l, Ltd. v. John Does 1–37, 282 F.R.D. 189, 195 (N.D. Ill. 2012) (finding that there must be “a reasonable calculation that the individuals connected to the subpoenaed IP addresses will have any discoverable information related to the current defendants”).

  210. [210]. See, e.g., Complaint at ¶ 11, PTG Nev., L.L.C. v. Does 1–24, No. 1:16-cv-01621 (N.D. Ill. Jan. 29, 2016) (“Plaintiff ... believes that additional information obtained [in discovery] will lead to the identification of additional infringing parties, as monitoring of online infringement of Plaintiff’s motion picture is ongoing.”).

  211. [211]. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).

  212. [212]. See Sag, supra note 5, at 1105–46.

  213. [213]. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 546 (2007) (quoting Dura Pharm., Inc. v. Broudo, 544 U.S. 336, 347 (2005)).

  214. [214]. In the alternative, defendant could make a Motion for a More Definite Statement under Federal Rule of Civil Procedure 12(e). The rule provides that “[a] party may move for a more definite statement of a pleading to which a responsive pleading is allowed but which is so vague or ambiguous that the party cannot reasonably prepare a response. The motion must be made before filing a responsive pleading and must point out the defects complained of and the details desired.” Fed. R. Civ. P. 12(e).

  215. [215]. See Pac. Century Int’l, Ltd. v. John Does 1–37, 282 F.R.D. 189, 195 (N.D. Ill. 2012) (“To have relevance to the actions currently pending, however, the requested discovery must bear on the civil conspiracy and copyright claims against the current John Doe defendants. In light of the structure of the BitTorrent system, subpoenas seeking the identity of users of non-party IP addresses are not reasonably calculated to lead to the discovery of evidence relevant to the pending claims.”).

  216. [216]. Fed. R. Civ. P. 26(d)(1).

  217. [217]. See Jesse N. Panoff, Rescuing Expedited Discovery from Courts & Returning It to FRCP 26(d)(1): Using a Doctrine’s Forgotten History to Achieve Legitimacy, 64 Ark. L. Rev. 651, 651 (2011) (noting that “courts have developed more than twenty standards for construing Rule 26(d)(1)”).

  218. [218]. The preliminary injunction standard established by Notaro v. Koch is generally used in jurisdictions that require a preliminary injunction standard to be met for early discovery. Notaro v. Koch, 95 F.R.D. 403, 405 nn.3–4 (S.D.N.Y. 1982). This standard is a four-part test that requires the movant to show: (1) that it would suffer irreparable harm without early discovery; (2) a “probability of success on the merits; (3) some connection between the expedited discovery and ... irreparable [harm]; and (4) some evidence that the injury that [would] result” if discovery is denied would be greater than the harm the opposing party would suffer if discovery were ordered. Id. at 405 n.2.

  219. [219]. The factors considered under a “good cause” standard vary widely between jurisdictions, but in general, “[g]ood cause may be found where the need for expedited discovery, in consideration of the administration of justice, outweighs the prejudice to the responding party.” Semitool, Inc. v. Tokyo Electron Am., Inc., 208 F.R.D. 273, 276 (N.D. Cal. 2002). Other factors typically considered by courts include: “(1) whether a preliminary injunction is pending; (2) the breadth of the discovery requests; (3) the purpose for requesting the expedited discovery;
    (4) the burden on the defendants to comply with the requests; and (5) how far in advance of the typical discovery process the request was made.” Am. LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063, 1067 (C.D. Cal. 2009) (quoting Disability Rights Council of Greater Wash. v. Wash. Metro. Area Transit Auth., 234 F.R.D. 4, 6 (D.D.C. 2006)).

  220. [220]. See generally Riley v. California, 134 S. Ct. 2473 (2014) (finding that a warrantless search of a cellphone would violate the Fourth Amendment because of privacy interests).

  221. [221]. See supra Part III.B.1–2.

  222. [222]. See, e.g., Declaration of J. Christopher Lynch in Support of Defendant’s Lamberson’s Response to Plaintiff’s Motions in Response to Defendant’s Second Amended Answer and Affirmative Defenses and Counterclaim, Elf-Man, LLC v. Lamberson, No. 2:13-cv-00395 (E.D. Wash. July 21, 2014).

  223. [223]. See, e.g., id. at 26.

  224. [224]. See id.

  225. [225]. Compare PTG Nev., LLC v. Does 1–24, No. 1:16-cv-01621 (N.D. Ill. Jan. 17, 2017) (order granting defendant’s motion to dismiss), with Clear Skies Nev., LLC v. Does 1–30, No. 1:15-cv-06708 (N.D. Ill. Dec. 19, 2016), ECF No. 62 (order denying Defendant’s Motion to Dismiss).

  226. [226]. Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994); see also Kirtsaeng v. John Wiley
    & Sons, Inc., 136 S. Ct. 1979, 1985 (2016) (discussing the holding from Fogerty v. Fantasy, Inc.).

  227. [227]. Fogerty, 510 U.S. at 534.

  228. [228]. Id. at 522, 524 n.11 (discussing and interpreting the language in the Copyright Act of 1976).

  229. [229]. Id. at 526.

  230. [230]. Id. at 526–27 (quoting Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975)).

  231. [231]. See Patry, supra note 190, § 22:210 (describing the Ninth Circuit’s objective unreasonableness standard as “a mere semantic trick used to continue to apply the dual system rejected inFogerty”).

  232. [232]. Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351, 1363–66 (2013) (holding that the first-sale doctrine applies to works lawfully made overseas).

  233. [233]. John Wiley & Sons, Inc. v. Kirtsaeng, No. 08-cv-07834-DCP, 2013 WL 6722887, at *4 (S.D.N.Y. Dec. 20, 2013).

  234. [234]. John Wiley & Sons, Inc. v. Kirtsaeng, 605 F. App’x 48, 49 (2d Cir. 2015).

  235. [235]. Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979, 1983 (2016) (“But the court must also give due consideration to all other circumstances relevant to granting fees; and it retains discretion, in light of those factors, to make an award even when the losing party advanced a reasonable claim or defense. Because we are not certain that the lower courts here understood the full scope of that discretion, we return the case for further consideration of the prevailing party’s fee application.”).

  236. [236]. Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994) (quoting Hensley v. Eckerhart, 461 U.S. 424, 436 (1983)).

  237. [237]. Kirtsaeng, 136 S. Ct. at 1985.

  238. [238]. Fogerty, 510 U.S. at 534 n.19 (quoting Lieb v. Topstone Indus., Inc., 788 F.2d 151, 156 (3d Cir. 1986)).

  239. [239]. Id.

  240. [240]. Cobbler Nev., LLC v. Gonzales, No. 3:15-cv-00866-SB, 2016 WL 8677323, at *1 (D. Or. Dec. 2, 2016), report and recommendation adopted, 2017 WL 44948 (D. Or. Jan. 4, 2017) (“Despite having acknowledged that Gonzales is not the likely infringer, Plaintiff filed a First Amended Complaint on November 4, 2015, naming Gonzales as the defendant.”).

  241. [241]. Id. at *6.

  242. [242]. Assessment Tech. of Wis., LLC v. WIREdata, Inc., 361 F.3d 434, 437 (7th Cir. 2004); see also DeliverMed Holdings, LLC v. Schaltenbrand, 734 F.3d 616, 626 (7th Cir. 2013) (affirming award of reasonable attorneys’ fees to the prevailing defendant).

  243. [243]. Fogerty, 510 U.S. at 534 n.19.

  244. [244]. See Lumiere (Rights) Ltd. v. Baker & Taylor, Inc., 116 F.3d 484, 1998 WL 303244, *5 (9th Cir. 1997) (unpublished table decision) (finding that where a party’s “copyright claims are, if not frivolous, at least factually unsupported...[a]n award of fees may deter other such suits”).

  245. [245]. Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657, 665 (9th Cir. 2017).

  246. [246]. Id. at 675 (quoting Fogerty, 510 U.S. at 527).

  247. [247]. Copyright Act, 17U.S.C. §505 (2012).

  248. [248]. Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep’t of Health & Human Res., 532 U.S. 598, 603–04 (2001) (quoting Tex. State Teachers Ass’n v. Garland Indep. Sch. Dist., 489 U.S. 782, 792–93 (1989)).

  249. [249]. Id. at 604.

  250. [250]. Roberson v. Giuliani, 346 F.3d 75, 79–81 (2d Cir. 2003).

  251. [251]. Under Federal Rule of Civil Procedure 41(a)(1), the plaintiff may dismiss an action without a court order by filing a notice of dismissal before the opposing party serves either an answer or a motion for summary judgment. Fed. R. Civ. P. 41(a)(1). That dismissal is without prejudice unless the notice states otherwise. Id.

  252. [252]. See, e.g., Cadkin v. Loose, 569 F.3d 1142, 1145 (9th Cir. 2009).

  253. [253]. See Fed. R. Civ. P. 41(a).

  254. [254]. Nemaizer v. Baker, 793 F.2d 58, 60 (2d Cir. 1986) (holding that “[a] dismissal with prejudice has the effect of a final adjudication on the merits favorable to defendant and bars future suits brought by plaintiff upon the same cause of action”); Ninox Television Ltd. v. Fox Entm’t Grp., Inc., No. 04-cv-07891-DLC, 2006 WL 1643300, at *2 (S.D.N.Y. 2006); NXIVM Corp. v. Ross Inst., No. 1:03-cv-00976-GLS-DRH, 2005 WL 1843275, at *2–3 (N.D.N.Y. 2005) (holding that, when there is a dismissal with prejudice, a defendant is the prevailing party even if no written decision is issued). But see Chambers v. Time Warner, Inc., 279 F. Supp. 2d 362, 365–66 (S.D.N.Y. 2003).

  255. [255]. In Bridgeport Music, Inc. v. London Music, U.K., the Sixth Circuit held to the contrary, i.e., that plaintiff’s voluntary dismissal with prejudice did not make defendant a prevailing party. Bridgeport Music, Inc. v. London Music, U.K., 226 F. App’x 491, 492 (6th Cir. 2007). This position strikes us as clearly wrong, and Patry on Copyright finds it inexplicable. Patry, supra note 190, §22:211.

  256. [256]. Such an impact is common in the federal rules. Rule 13, for example. See Fed. R. Civ. P. 13.

  257. [257]. Cobbler Nev., LLC v. Gonzales, No. 3:15-cv-00866-SB, 2016 WL 8677323, at *2 (D. Or. Dec. 2, 2016), report and recommendation adopted, No. 3:15-cv-00866-SB, 2017 WL 44948 (D. Or. Jan. 4, 2017) (citations omitted).

  258. [258]. See Cobbler Nev, LLC v. Cerritos, No. 3:15-cv-01228-SB, 2016 WL 7177527, at *5–8 (D. Or. Dec. 9, 2016) (holding that fee-shifting was inappropriate under Fogerty and because the plaintiff had unnecessarily prolonged the litigation); Cobbler Nev., LLC v. Anonymous Users of Popcorn Time, No. 3:15-cv-01550-SB, 2016 WL 4238639, at *4 (D. Or. Aug. 10, 2016) (holding that fee-shifting in a mass copyright litigation does not satisfy the factors in Fogerty); Glacier Films (USA), Inc. v. Turchin, No. 3:15-cv-01817-SB, 2016 WL 4251581, at *3–5 (D. Or. Aug. 10, 2016), appeal docketed, No. 16-cv-35688 (9th Cir. Aug. 26, 2016) (same); Countryman Nev., LLC v. Doe, 193 F. Supp. 3d 1174, 1182–83 (D. Or. 2016) (finding that fee-shifting was inappropriate under the totality of the circumstances).

  259. [259]. See, e.g., Cobbler Nev., 2016 WL 7177527, at *5.

  260. [260]. Glacier Films (USA), Inc. v. Gallatin, No. 3:15-cv-01632-SB, 2016 WL 3148401, at *3 (D. Or. May 12, 2016).

  261. [261]. Cobbler Nev., 2016 WL 7177527, at *5.

  262. [262]. Id.

  263. [263]. Glacier Films (USA), 2016 WL 4251581, at *3.

  264. [264]. Milton H. Greene Archives, Inc. v. Julien’s Auction House LLC, 345 F. App’x 244, 249 (9th Cir. 2009).

  265. [265]. Countryman Nev., LLC v. Doe, 193 F. Supp. 3d 1174, 1183 (D. Or. 2016).

  266. [266]. Id.

  267. [267]. Cobbler Nev., 2016 WL 7177527, at *6 (“In these BitTorrent copyright cases, the threat of fee-shifting has emboldened Plaintiff’s counsel to demand thousands of dollars to settle a claim, even where the infringing defendant admits early in the case that he illegally downloaded the movie.”).

  268. [268]. Id.

  269. [269]. Glacier Films (USA), Inc. v. Turchin, No. 3:15-cv-01817-SB, 2016 WL 4251581, at *4 (D. Or. Aug. 10, 2016) (“The Copyright Act, as it is being enforced in these BitTorrent cases, has created results inconsistent with the goals of the Act.”).

  270. [270]. Id.

  271. [271]. See, e.g., Cobbler Nev., 2016 WL 7177527, at *6 (“When an individual who has illegally downloaded a movie is contacted by Plaintiff’s counsel, and faces the threat of a statutory damage award that could theoretically reach $150,000, as well as the threat of a substantial fee award, the resulting bargaining process is unequal, and unfair.” (citation omitted)).

  272. [272]. Id.

  273. [273]. See, e.g., Glacier Films (USA), Inc., 2016 WL 4251581, at *5 (“Ordinarily, the ‘federal court system provides litigants with some of the finest tools available to assist in resolving disputes.’ Those tools can empower copyright-owners to enforce their rights, but they are also capable of being used as instruments of abuse. Where abuse is likely, as it is here, courts should not make those tools available without careful scrutiny.”).

  274. [274]. The party seeking fees “bears the burden of establishing entitlement to an award and documenting the appropriate hours expended and hourly rates.” Hensley v. Eckerhart, 461 U.S. 424, 437 (1983).

  275. [275]. LHF Prods., Inc. v. Does 1–19, No. 16-cv-01175-RSM, 2017 WL 615197, at *4 (W.D. Wash. Feb. 15, 2017) (“Given that Mr. Lowe’s work in this matter amounts to nothing more than form pleading, the Court ... will reduce Mr. Lowe’s hourly rate to $300.”); Qotd Film Inv. Ltd. v. Starr, No. 16-cv-00371-RSL, 2016 WL 5817027, at *4 (W.D. Wash. Oct. 5, 2016) (“[T]he Court will reduce counsel’s hourly rate to $350 per hour ... .”); Dall. Buyers Club, LLC v. Nydam, 14-cv-01684-RAJ, 2016 WL 7719874, at *5–6 (W.D. Wash. Aug. 8, 2016).

  276. [276]. Copyright Act, 17U.S.C. §504(b), (c)(1) (2012) (allowing the copyright owner to elect, at any time before final judgment, to receive statutory damages in lieu of actual damages or restitution).

  277. [277]. Scott Stein, iTunes vs. Amazon: What’s the Best Video Service on the iPad?, CNET (Aug. 1, 2012, 3:47 PM), https://www.cnet.com/news/itunes-vs-amazon-whats-the-best-video-service-on-the-ipad (finding the average price of iTunes and Amazon movie downloads were $14.99 to $19.99 and $9.99 to $14.99, respectively, in 2012).

  278. [278]. Ben Depoorter, Over-Claiming Willfulness: Statutory Damage Awards by the Numbers 8, 10 (working paper on file with the authors); see also id. at 31 (demonstrating that enhanced damages based on willful infringement are often claimed in copyright cases but infrequently awarded).

  279. [279]. Sag, supra note 5, at 1119. See generally Pamela Samuelson & Tara Wheatland, Statutory Damages in Copyright Law: A Remedy in Need of Reform, 51 Wm. & Mary L. Rev. 439 (2009) (detailing the inconsistencies of statutory damage awards in copyright cases with legislative goals).

  280. [280]. Sag, supra note 5, at 1119.

  281. [281]. According to the Center for Disease Control and Prevention, “[i]n 2015, 10,265 people died in alcohol-impaired driving crashes, accounting for nearly one-third (29%) of all traffic-related deaths in the United States.” Impaired Driving: Get the Facts, Centers for Disease Control & Prevention, https://www.cdc.gov/‌motorvehiclesafety/‌impaired_driving/‌impaired-drv_factsheet.html (last visited Aug. 28, 2017).

  282. [282]. See DUI or DWI Punishments and Penalties, Nolo, http://www.nolo.com/legal-encyclopedia/
    dui-or-dwi-punishments-penalties-30321.html (last visited Oct. 28, 2017) (noting that courts impose fines for DUI or DWI ranging from $500 to $2,000, and that first-offense DUI or DWI is classified as a misdemeanor punishable by up to six months in jail).

  283. [283]. See, e.g., Cal. Vehicle Code § 42001.5 (West 2016) (imposing a fine of $250 for parking in disabled person’s space or sidewalk access area).

  284. [284]. Courts have a statutory obligation to ensure the “just” application of statutory damages. See Copyright Act, 17U.S.C §504(c)(1) (2012) (providing that the award of statutory damages should be “as the court considers just”). This obligation is also Constitutional. See State Farm Mut. Auto. Ins. Co. v. Campbell, 538 U.S. 408, 416 (2003) (“The Due Process Clause of the Fourteenth Amendment prohibits the imposition of grossly excessive or arbitrary punishments on a tortfeasor.”).

  285. [285]. Harris v. Emus Records Corp., 734 F.2d 1329, 1335 (9th Cir. 1984).

  286. [286]. Landstar Ranger, Inc. v. Parth Enters., Inc., 725. F. Supp. 2d 916, 921 (C.D. Cal. 2010).

  287. [287]. See LHF Prods., Inc. v. Doe 1, No. 2:16-cv-01017 (W.D. Wash. Feb. 15, 2017) (order granting in part motion for default judgment).

  288. [288]. Fed. R. Civ. P. 37(a)(3)–(4).

  289. [289]. See Malibu Media LLC v. Doe, No. 1:13-cv-06312, 2016 WL 464045, at *3 (N.D. Ill. Feb. 8, 2016) (“Malibu objected to Doe’s request that it produce all of the PCAPs allegedly captured because IPP charges Malibu by the hour to extract the PCAPs.” (internal quotation marks omitted)). We note that this is walking a fine line; if the plaintiff wants the court to consider its experts to be lay “fact” witnesses, it should not be paying them. Any motion to compel should press the court to recognize the troll’s witnesses as experts, not lay witnesses.

  290. [290]. See, e.g., id.

  291. [291]. See, e.g., Soto v. City of Concord, 162 F.R.D. 603, 619 (N.D. Cal. 1995) (holding actual possession of documents is not required under Rule 34(a)).

  292. [292]. United States v. Int’l Union of Petrol. & Indus. Workers, 870 F.2d 1450, 1452 (9th Cir. 1989) (“Control is defined as the legal right to obtain documents upon demand.”); see also New York ex rel. Boardman v. Nat’l R.R. Passenger Corp., 233 F.R.D. 259, 268 (N.D.N.Y. 2006); Prokosch v. Catalina Lighting, Inc., 193 F.R.D. 633, 636 (D. Minn. 2000) (holding that “control” does not require ownership, just the ability to obtain a document on demand).

  293. [293]. Fed. R. Civ. P. 34(a)(1); see also Cumis Ins. Soc’y, Inc. v. S.-Coast Bank, 610 F. Supp. 193, 196 (N.D. Ind. 1985) (holding the phrase “possession, custody, or control” to be disjunctive and requiring only one element be met).

  294. [294]. Union Oil Co. v. Leavell, 220 F.3d 562, 567–68 (7th Cir. 2000) (“[T]he tradition that litigation is open to the public is of very long standing. People who want secrecy should opt for arbitration. When they call on the courts, they must accept the openness that goes with subsidized dispute resolution ... . Judicial proceedings are public rather than private property ... .” (citation omitted)); Novelty, Inc. v. Mountain View Mktg., Inc., 265 F.R.D. 370, 377 (S.D. Ind. 2009); see also In re Specht, 622 F.3d 697, 701 (7th Cir. 2010) (“Documents that affect the disposition of federal litigation are presumptively open to public view, even if the litigants strongly prefer secrecy....”).

  295. [295]. If the software constitutes a valuable trade secret, it can be subject to a protective order.

  296. [296]. Defendants have sought production of the relevant PCAP files in several cases. To our knowledge they have only ever been produced, and after considerable delay, in three cases.

  297. [297]. Fed. R. Civ. P. 37(c)(1); see also Tribble v. Evangelides, 670 F.3d 753, 758 (7th Cir. 2012) (concluding that defendant police officers’ failure to disclose Assistant State’s Attorney as an expert witness was not justified and not harmless and ordering a new trial); Musser v. Gentiva Health Servs., 356 F.3d 751, 758 (7th Cir. 2004) (holding that expert testimony proffered in opposition to summary judgment was properly excluded as discovery sanction there was reasonable basis for district court’s finding that sanctioned parties’ failure to disclose experts lacked substantial justification and was not harmless).

  298. [298]. David v. Caterpillar, Inc., 324 F.3d 851, 857 (7th Cir. 2003).

  299. [299]. Malibu Media, LLC. v. Doe, No. 1:13-cv-06312 (N.D. Ill. Sept. 04, 2013), ECF No. 180 (“Without the [experts’] declarations, there is no evidence linking Doe or Doe’s IP address to [plaintiff’s] work. The failure to disclose them under Rule 26(a)(2) was not harmless.”).

  300. [300]. Id. at *23 (“Weighing heavily in favor of exclusion is the fact that the court drew [plaintiff’s] attention to the need for formal expert disclosures at the hearing on January 23, 2015.... If [plaintiff] had, in fact, moved for and been given leave to serve additional expert disclosures even at that late date, the schedule could have been adjusted to allow Doe appropriate time to deal with those disclosures. Malibu did not so move.... That Malibu ignored the court’s admonition is evidence of at least willfulness, if not bad faith.”).

  301. [301]. See generally Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993) (describing the standard for admission of scientific evidence).

  302. [302]. Id. at 580; Fed. R. Evid. 702.

  303. [303]. Fed. R. Evid. 702; Kumho Tire Co. v. Carmichael, 526 U.S. 137, 137, 147 (1999).

  304. [304]. Daubert, 509 U.S. at 592–93.

  305. [305]. Id. at 589.

  306. [306]. Bourjaily v. United States, 483 U.S. 171, 175–76 (1987).

  307. [307]. Dall. Buyers Club, LLC v. Doughty, No. 3:15-cv-00176-AC, 2016 WL 1690090, at *2–3, (D. Or. Apr. 27, 2016).

  308. [308]. Id.

  309. [309]. See, e.g., Malibu Media v. Doe, No. 1:13-cv-06312 (N.D. Ill. Sept 04, 2013), ECF No. 180 (order granting defendant’s motion for summary judgment).

  310. [310]. Bombard v. Fort Wayne Newspapers, Inc., 92 F.3d 560, 562 (7th Cir. 1996).

  311. [311]. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986).

  312. [312]. Id. at 255.

  313. [313]. Fed. R. Civ. P. 56(e)(2); N.D. Ill. L.R. 56.1(b)(3)(B); see also Cracco v. Vitran Express, Inc., 559 F.3d 625, 632 (7th Cir. 2009) (“When a responding party’s statement fails to dispute the facts set forth in the moving party’s statement in the manner dictated by the rule, those facts are deemed admitted for purposes of the motion.”); Malibu Media, LLC. v. Doe, No. 1:13-cv-6312 (N.D. Ill. Sept 04, 2013), ECF No. 180.

  314. [314]. In re BitTorrent Adult Film Copyright Infringement Cases, 296 F.R.D. 80, 84 (E.D.N.Y. 2012) (“An IP address provides only the location at which one of any number of computer devices may be deployed, much like a telephone number can be used for any number of telephones.”).

  315. [315]. Malibu Media, LLC v. John Doe, No. 1:13-cv-06312 (N.D. Ill. Sept. 4, 2013).

  316. [316]. Id.

  317. [317]. See, e.g., id.

  318. [318]. Id. (“There is nothing in either declaration that would allow the court to conclude that the ‘bits’ and ‘pieces’ captured by [plaintiff’s experts’] technology as allegedly distributed from Doe’s IP address meet the standard of originality justifying a finding that they are protectable elements of the works. Even if the hash value captured in the PCAP corresponds to portion of a digital file that is ‘identical, strikingly similar or substantially similar to’ [plaintiff’s] copyrighted work, there is nothing before the court that describes the audio/visual material that is represented by that hash value. Is it the entire movie or is it some portion so small that it would not be identifiable as part of the movie? There is nothing in this record to answer that question.”).

  319. [319]. Ingenuity 13 LLC v. Doe, No. 2:12-cv-6662-OD-JCx, 2013 U.S. Dist. LEXIS 16952, at *7 (C.D. Cal. Feb. 7, 2013).

  320. [320]. Feist Publ’ns., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).

  321. [321]. 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright §13.03(A) (rev. ed. 2017).

  322. [322]. We conducted this search in mid-February 2017. The LexMachina figures are slightly different than our own calculations, which were made directly with the PACER data, but the differences are not significant. While generally we prefer working with the PACER data directly for the sake of transparency and replication, LexMachina has richer data in terms of case disposition.

  323. [323]. Malibu Media, LLC v. Bui, No. 1:13-cv-00162-RJJ (W.D. Mich. July 21, 2014). LexMachina listed Dallas Buyers Club, LLC v. Doughty, No. 3:15-cv-00176-AC (D. Or. 2016), as summary judgment in favor of the plaintiff, whereas in fact the court denied the defendant’s motion for summary judgment on direct infringement and granted its motion on claims for contributory and vicarious copyright infringement. LexMachina also listed Malibu Media, LLC v. Doe, No. 2:14-cv-01280 (E.D. Pa. Feb 2, 2015), as summary judgment in favor of the plaintiff, whereas in fact, the plaintiff’s motion for summary judgment was denied and the defendant’s motion for summary judgment was granted.

  324. [324]. Countryman Nev., LLC v. Doe, 193 F. Supp. 3d 1174, 1175 (D. Or. 2016).

  325. [325]. Malibu Media, LLC v. John Does 1, 6, 13, 14, 950 F. Supp. 2d 779, 780 (E.D. Pa. 2013).

  326. [326]. Order at 1–2, Malibu Media, LLC v. Bui, No. 1:13-cv-00162, 2014 WL 12469955 (W.D. Mich. July 21, 2014).

  327. [327]. Plaintiff’s Motion for Summary Judgment at 3, Malibu Media, LLC v. Bui, No. 1:13-cv-00162, 2014 WL 8727068 (W.D. Mich. May 14, 2014).

  328. [328]. Countryman Nev., 193 F. Supp. 3d at 1179.

  329. [329]. Malibu Media v. John Does, 950 F. Supp. 2d at 780.

  330. [330]. Id.

  331. [331]. Id.

  332. [332]. Id.; Transcript of Bench Trial at 3, Malibu Media, LLC v. John Does 1, 6, 13, 14, 950 F. Supp. 2d 779 (E.D. Pa. 2013) (No. 12-2078) (on file with the authors).

  333. [333]. Malibu Media, LLC, 950 F. Supp. 2d at 786.

  334. [334]. Id. at 787 (“Thus, the entire focus of the non-jury trial was to establish a record, following which I would make a determination as to the amount of damages to be found against White.”).

  335. [335]. Transcript of Bench Trial, supra note 332, at 159, 161.

  336. [336]. Id. at 24–53.

  337. [337]. Id. at 54–89. In various declarations Patzer identifies himself as the creator of the software used by IPP/Excipio/Crystal Bay Corp. All of those declarations are notably short on details such as Patzer’s education, qualifications, or experience. See, e.g., Declaration of Michael Patzer, Malibu Media, LLC v. John Doe, No. 3:15-cv-04441-WHA, (N.D. Cal. February 2, 2017), ECF No. 144-8.

  338. [338]. Id. at 92–102.

  339. [339]. Id. at 109–42.

  340. [340]. See Malibu Media, LLC, 950 F. Supp. 2d at 780.

*

Matthew Sag is a Law Professor at Loyola University Chicago School of Law and the Associate Director of the Institute for Consumer Antitrust Studies.


**

Jake Haskell is a recent graduate of Loyola University Chicago School of Law and an attorney practicing intellectual property law in Chicago.


We acknowledge the generous research funding of the Institute for Consumer Antitrust Studies at Loyola and the database access provided by Lex Machina. We thank Tonja Jacobi, and Spencer Waller for their many insights and comments and Wade Formo for additional research. The views presented in this Article are strictly our own. We emphasize that although this Article contains advice about the law, it is not legal advice, and we disclaim any inference of an attorney–client relationship between the reader and ourselves.