How improper joinder can end infringement cases once and for all…

I am very excited to see that judges are starting to get involved in the discussion of whether it is proper to sue tens, hundreds, or thousands of John Doe Defendants accused of downloading copyrighted films (usually pornographic in character, and using BT to do so) in one lawsuit.

Just a few days ago, I wrote about Judge Beryl Howell’s opinion in D.C. where she ruled that joinder of any number of defendants in a BT lawsuit is OKAY. Her reasoning centered around the fact that the defendants are unnamed, and [ignoring the mass extortion scheme that is causing many families to hand over their life’s savings to the copyright trolls] that it is more “convenient” for the court to manage one lawsuit with thousands of UNNAMED Doe Defendants rather than trying to manage thousands of lawsuits with one defendant in each lawsuit.

This evening, I read an article from Sophicticated Jane Doe’s “Fight Copyright Trolls” (kudos to Raul) entitled “Judge Marrero: Pornography may not be entitled to copyright protection.

Quite frankly, the article is not only one of the best articles I have read yet, but it teaches and describes the issues in a very methodical order and in a way that cannot be replicated in any blog post of mine, and for this reason, I highly suggest that you read 1) that article, and 2) the actual order (which is equally a good read for those interested in the topic).

My contribution is that although this order predated Judge Howell’s order, it addressed the split not only in the Southern District of New York, but it also describes the issues surrounding BT copyright infringement cases in which judges have been ruling inconsistently across the federal districts. It demonstrates that the issues are heating up, and that there is a need for consistent application of the joinder rules across the federal districts.

The funny part about this order is that whether or not joinder was proper in this case — “Next Phase Distribution, Inc. v. John Does 1-27” (Case No. 1:12-cv-03755-VM [or 12 Civ. 3755 for those New York attorneys who don’t like federal case law nomenclature], which is being heard by Judge Marrero in the U.S. District Court for the Southern District of New York) — the SDNY Judge Marrero decided to sever and dismiss John Does 2-27 for reasons INDEPENDENT OF THE JOINDER RULES. Read on.

Here are the three reasons [independent of joinder] which Judge Marrero used to sever and dismiss the defendants:

Reason one – “it would be impossible to manage the discovery of 27 different defendants.”

Imagine seizing 27 different sets of computers and dealing with 27 different sets of discovery, where each defendant held their own depositions, interrogatories, and where each defendant answered their complaint with potentially different and incompatible defenses (e.g., it wasn’t me, it was my son, it was my neighbor; I have an open wireless connection, my wifi was hacked, etc.). It would essentially be like holding 27 different trials in one trial. For this reason, the judge decided to sever and dismiss the defendants.

Reason two – “it is conceivable that several of the John Does did not actually download the copyrighted film.”

According to Mike Meier’s own admission, “roughly 30% of names turned over by ISPs are not those who actually shared or downloaded the videos.” Now while this statement can easily be taken out of context, it points to the reasonable doubt as to whether an accused infringer is actually the one who downloaded the copyrighted film (unfortunately, that is not enough to overcome the plaintiff’s LOW burden of proof, which is “preponderance of the evidence, or more-likely-than-not”.

What made me stop and stare at the screen when I read the order was that I was so excited that the judge explicitly stated that “an IP address does not necessarily correlate to a particular alleged infringer because several people may access the same IP address.”

There is more to this statement than the judge realizes, and while it has application to IP addresses changing and being used by multiple infringers (specifically regarding cases where the plaintiffs track THE IP ADDRESS regardless of whether it was issued to the subscriber at the time the downloads happened).

In this case, it has the simple application that the subscriber is akin to the owner of a telephone landline account, and many people come in to use their phone — the account holder is not the one that makes each and every call, and for this reason, the account holder cannot be held liable for something that someone else did on their account. Back to the case.

Reason three – “if the Motion Picture is considered obscene, it may not be eligible for copyright protection.”

I cannot state more clearly that as Raul described in his article, this certainly is a clear shot across the bow that I have been sensing in many cases for quite a while now — that pornographic films are obscene, and that they do not qualify for copyright protection.

All I could say about this is that a number of attorneys and I have discussed this issue, not in the context of whether a “cheating housewife,” a “babysitter,” or any genre is copyrightable in and of itself (see the topic of “Scènes à faire”), but in the context of simply whether an obscene film is copyrightable at all.  For a long time, it wasn’t.  Then NY and some states started to allow it, and now perhaps courts will start reconsidering the topic. For an interesting write-up on the topic, see here.

In short, judges are getting tired of these pornography lawsuits, and I am getting tired of judges granting early discovery to copyright trolls without restrictions.

For this reason, I am happy that judges are starting to smarten up, and hopefully they will all start taking my advise that if they are going to grant early discovery to the copyright trolls,

1) the contact information of the accused John Does should remain private to the copyright trolls — only the CITY AND STATE of each accused Doe Defendant should be provided;

2) if contact information is to be provided, that it be “in camera” meaning that the ISPs should produce the information NOT TO THE COPYRIGHT TROLLS, BUT TO THE COURTS (so that the extortion scheme where plaintiff attorneys scare defendants into settling), and

3) the information provided on each John Doe Defendant only be permitted to be used IN THE INSTANT CASE (and not in a subsequent case where the plaintiff attorney threatens that “unless you settle now, we will ‘name’ you in a lawsuit in your home state.”

Judge Forrest (and now Judge Marrero) has put one more spin on this which is commendable — that the identity of the accused Doe Defendant be kept anonymous on the court’s docket.

While this is admirable, it is not enough because defendants don’t only settle out of embarrassment for being associated with a pornography case — they settle because it is sometimes cheaper to pay the plaintiff attorneys off than it is to fight them. This is a sad and broken part of the legal system, and putting the protections I outlined above would stop the copyright trolls in their tracks and would make these cases go away once and for all.

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    6 thoughts on “How improper joinder can end infringement cases once and for all…”

    1. Shot across the bow sounds about right.

      Given the social climate in the US these days, I don’t think many would seriously be questioning the copyrightability of pornography if not for Copyright Trolls, even if adult film companies were filing copyright infringement lawsuits along more traditional lines (i.e. suing for outright copying ‘scripts,’ concepts or characters, or suing bootleggers who are profiting from selling copies of their movies).

      For a judge to even bring this up suggests that he wants to send a message and is looking for ways to reign in this behavior. Basically saying “look guys, we let you test drive these privileges, we thought you could handle it, but if you can’t behave like responsible adults maybe we have to take it back.” With guys like Meier admitting to 30% error rates, Steele filing lawsuits and requesting statutory damages for works that aren’t even registered, and everyone shamelessly turning lawsuits into a business model, it is quite obvious that the adult film industry has come to use copyright law with no regard for playing by the letter or spirit of it, and has possibly crossed over into criminality with their dunning practices.

      If this actually turns into a real battle for the Trolls and goes to the Supreme Court I can’t imagine porn will ultimately be found uncopyrightable, and I wouldn’t want to see that (without getting into my overall feelings about copyright I’ll just say I don’t think porn should be treated differently than other media). The real risk here is provoking that battle in the first place, then getting caught up in perhaps years of actually having to litigate instead of just pretending to litigate to scare people into sending checks. This judge appears to be warning the Trolls that they are in the Danger Zone.

    2. There is another safeguard put in place by some FL judges. Raul noticed it and I tweeted about it the other day. A couple of judges included the following to their orders:

      At any time, a John Doe Defendant who does not wish to be contacted by Plaintiff may inform Plaintiff by phone or send Plaintiff’s counsel an e-mail addressed to that states: “Please do not contact me (again) prior to serving me in this matter.

    3. In one of his cases DCDC’s Facciola has done some of what you suggest:

      Case 1:11-cv-00058-ESH-JMF Document 23 Filed 08/06/12 Page 15 of 16
      C. Third Condition: To Alleviate the Burden on the Doe Defendants 1
      As I noted above, I am concerned by the prospect of plaintiff’s making settlement offers to the Doe defendants when these individuals may not be aware that they have legitimate defenses, particularly the defenses of lack of jurisdiction over the person, improper venue, and improper joinder. I have no inclination to dictate to plaintiff (or any one else) what they may or may not say during settlement negotiations. However, I have decided to preclude plaintiff from communicating directly with the Doe defendants prior to plaintiff’s naming these individuals as actual defendants in the complaint. Once they are named, further communications with them will require my permission.

      D. Fourth Condition: Good Faith Requirement
      Finally, I am requiring plaintiff to name as actual defendants only those Doe defendants who it believes, in good faith, to be amendable to the assertion of jurisdiction by this Court over their persons and as to whom venue is proper in this forum. I am not prejudging any argument as to either of those issues. While plaintiff will have an opportunity to address them in the ordinary course, if this case survives the naming of the defendants, I remind plaintiff that I purposefully identified the relevant principles pertaining to personal jurisdiction and venue. I expect that they will be ready to establish why this Court may assert personal jurisdiction over the Doe defendants who do not reside in the District of Columbia and why venue over any non-resident is proper in this judicial district”

      The document that quote is from is well cited and researched. It looks like an excellent opinion. Mysteriously in 1:11-cv-01741 document 49 Facciola just yesterday seems to have allowed unfettered discovery, that document also seems written by someone with a poorer vocabulary. He quashed all motions to sever etc. and dissolved the stay on discovery from several months ago while imposing no conditions on the discovery. Which is bizarre because in the previous document he wrote:

      “I am firmly convinced that it would be a gross abuse of discretion for me not to impose certain conditions upon plaintiffs being permitted to take the jurisdictional discovery they seek. There is simply nothing ordinary about these cases and they require something more than ordinary judicial passivity while service is accomplished.”

      I can only assume he will issue similar conditions in all his cases, otherwise he is accusing himself of a gross abuse of discretion.

    4. I am interested in whether anyone has explored a Telephone Consumer Protection Act claim against the trolls that call the IP account holders, especially the automated calls. If that statute applies, it could cost them $500 per call, plus attorneys fees, I believe. It might be the basis for a class action that could recover a lot of the money they have been shaking people down for.

      • As soon as the robocalls started, a few of us attorneys piped up about the financial risk they are opening themselves up to (not to mention the ethical violations that could happen when they call a defendant that is represented by an attorney). So far I have seen no activity yet against them on this topic, although them using the phone system to solicit settlements is a ticking timebomb for them.


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