Why Culpepper IP Is Engaging In A Takeover Of The Piracy Trade Names.

Pornhub lawsuit exposes the dangers of Google Analytics

I just learned that Kerry Culpepper of Culpepper IP just filed the RARBG trademark — probably with the intent of suing the 10+ year old RARBG website for trademark infringement. How do I *NOT* comment on an underhanded action like this?!?

I have been speaking about “copyright trolls” for over 10 years — Kerry Culpepper of Culpepper IP certainly has been the subject of our articles for many years now.

…Whether Kerry Culpepper is suing internet users who use bittorrent on their computers to view, stream, or download copyrighted movies belonging to his movie clients… or

whether his Culpepper IP law firm is suing CELL PHONE USERS for streaming movies using piracy apps…

or whether Kerry Culpepper is using Hawaii’s Rule 512(h) to skirt the Federal Rules of Civil Procedure’s expedited discovery rules and expose the identities of ISP subscribers

or whether his Culpepper IP is suing YTS / 133x.to bittorrent trackers and/or piracy websites

or whether Culpepper is sending subpoenas to Cloudfront to determine which IP addresses viewed his movie clients’ films without a license (because like Google Analytics, Cloudfront tracks which IP addresses visit which sites)…

Culpepper IP is the Hawaii-based law firm which is sending letters to internet users accused of VISITING a particular website, and downloading a movie which is copyrighted by his clients.

* 9/16/2020 UPDATE *: Joshua Lee of Culpepper IP is a first year associate working under Kerry Culpepper’s direction. Joshua Lee is also the name which is appearing on many of the Culpepper IP settlement demand letters, so I am mentioning him here.

CULPEPPER IP TRADEMARKS NOW FILED IN THE NAMES OF PIRACY WEBSITES

Now Kerry Culpepper is filing Culpepper IP trademarks which directly conflict with the names of piracy-based websites, companies, and bittorrent trackers.

To accomplish these new Culpepper IP trademarks, Culpepper is claiming that the piracy websites are not using the trademarked named in a way that can be recognized by the US Patent and Trademark Office (“USPTO”) as lawful use.

“Culpepper IP Trademark Claim: [The trademarked name] is not lawful use in commerce because the use of RARBG by the piracy websites is unlawful under federal law.”

MY THOUGHTS ON CULPEPPER IP TRADEMARKS:

As a registered patent attorney who has followed the rulings of the USPTO’s Patent Trial and Appeal Board (“PTAB”) my entire law career, I absolutely MUST have faith that the USPTO’s Trademark Application examiners will see that Culpepper IP trademarks are merely an attempt to engage in a settlement negotiations against accused internet users in the federal courts.

*9/17 UPDATE* – Alternatively, it has recently occurred to me that the Culpepper IP trademarks of the piracy website names will be used by Culpepper to take over the DOMAIN NAMES of the piracy-based websites. With millions of visitors each day, that kind of traffic can be worth millions of dollars to Culpepper and his clients, if only considering ad revenue.

If he takes over the websites and diverts the traffic to begin PAYING for lawful copies of the copyrighted content, e.g., in a movie subscription-based service, again, this could be worth millions of dollars to Culpepper and his clients.

kerry-culpepper-ip-trademarks Kerry Culpepper IP trademarks

“A TRADEMARK APPLICANT STILL CAN REGISTER AN APPLE TRADEMARK AS LONG AS IT IS NOT IN AN AREA OF PRACTICE COVERED BY APPLE, INC.”

I’ll say that again. A trademark applicant can still register the APPLE trademark name, even though Apple, Inc. already owns the APPLE trademark.

How is this possible, you might ask? All trademark applications must include “Trademark Classes.” These trademark classes identify in what area the business or trade intending to use the trademark will be using the mark (trademark).

Thus, if you are starting an “Apple” cleaning business where you intend to send your maid cleaning services to clean people’s homes, well, you are allowed to use the APPLE trade name.

LIKELIHOOD OF CONFUSION

To determine whether the applied-for trademark conflicts with (or “infringes upon”) an already trademarked name, the USPTO trademark application examiner will ask whether there is a “likelihood of confusion” between the already trademarked mark and the newly applied for trademark.

In other words, if someone buying your APPLE cleaning services might think that you are affiliated with Apple, Inc. — the APPLE trademark holder who sells APPLE COMPUTER PRODUCTS, PHONES, …and the expanding list of everything else they do, well then your APPLE trademark application will be rejected.

WHY CULPEPPER IP TRADEMARKS MIGHT FAIL

Kerry Culpepper of Culpepper IP is also a patent attorney, meaning by definition that he likely also knows the “soft intellectual property” laws and rules cold. Thus, his Culpepper IP trademarks no doubt are following the trademark rules.

If I were in Kerry Culpepper’s shoes and I was a “crafty” attorney, I would make sure that my Culpepper IP trademarks will claim to be a business PRACTICING IN AN AREA THAT IS DIFFERENT FROM and CANNOT BE CONFUSED WITH the piracy-based websites I intend on using for whatever profit motive Culpepper IP trademarks have in mind. Thus, I would use TRADEMARK CLASSES in my Culpepper IP trademarks that have nothing to do with what the piracy-based bittorrent websites are using.

But Kerry Culpepper is brazen. Thus his Culpepper IP trademarks approach is also brazen.

His Culpepper IP Trademarks list the TRADEMARK CLASS as “Downloadable computer software for downloading and streaming multimedia content images, videos and audio.” …EXACTLY what the piracy-based websites are doing.

KERRY CULPEPPER IS ENGAGING IN A TAKEOVER OF THE PIRACY TRADE NAMES.

In other words, his Culpepper IP trademarks campaign is engaging in a “legal takeover” of the RARBG TRADE NAME.

Instead of claiming a different TRADEMARK CLASS, Kerry Culpepper is claiming the IDENTICAL business as the piracy websites are using. He is doing so by claiming that these piracy-based websites have absolutely no trademark rights because by definition, their operations are illegal (because they engage in copyright infringement).

In other words, the anti-theft anti-piracy lawyer is “stealing” the trade names of piracy based websites and bittorrent trackers.

WHAT CULPEPPER LIKELY PLANS TO DO IF HE SUCEEDS WITH HIS TRADEMARK FILINGS.

Again, Kerry Culpepper is crafty, wicked smart (in a bad way), and is always many chess moves ahead of his opponents. I have no doubt that he is doing this for a very specific set of purposes.

WHETHER KERRY CULPEPPER SUCCEEDS OR WHETHER HE FAILS, THIS AND THIS (SUCCESS *AND* FAILURE) ARE LIKELY BOTH HIS PLAN.

IF CULPEPPER SUCCEEDS:

IF CULPEPPER SUCCEEDS: If Kerry Culpepper and his Culpepper IP trademarks succeed in getting the piracy-based trademarks awarded to him, he will no doubt try to take over the RARBG domain names (along with the YTS and 133x.to domain names) claiming that he is the rightful trademark owner of them.

By taking over the domain names, he will automatically gain the viewership of MILLIONS of internet users WHO WANT TO SEE THE MOVIE CONTENT his RARBG replacement website will happily provide them… legitimate lawful movie content for a per-title-fee or a monthly subscription.

In other words, his Culpepper IP trademarks mission would be to convert MILLIONS OF PIRATES INTO PAYING CUSTOMERS. Is it no surprise that 42 Ventures lists Kerry Culpepper as the Director of this enterprise?

[And unrelated, I cannot help but to think that 42 Ventures, LLC is the very COMMON COPYRIGHT TROLL entity that I have been writing about for so many years now?! Think, 42+ movie companies who are interested in shaking down those who view their copyrighted content without a license.]

WHEN HE WINS, THE REAL PAIN WILL BEGIN

Once Kerry Culpepper wins the rights to the trademark, then the real enforcement will no doubt begin. [Can a scorpion change its nature to sting?]

I have no doubt that if his Culpepper IP trademarks campaign succeeds in getting awarded the trademarks, he will then approach the piracy-based website owners [who will likely be ignorant of the laws and will continue to use their trade name] and he will have them settle his claims against them for millions of dollars.

He will then go after their internet users. He will obtain subpoenas to determine who the ISP internet subscribers are who were assigned that IP address visiting the piracy-based website [to which he now owns the trademark for], and he will assert copyright infringement and trademark infringement claims against each-and-every internet user who uses his newly-trademarked name.

He could then ask for thousands of dollars from each internet user, and he could sue the ones who do not settle (or purchase his new services) in federal courts across the US.

IF CULPEPPER FAILS:

IF CULPEPPER FAILS: If Kerry Culpepper fails in getting the piracy-based Culpepper IP trademarks awarded to him, he will either change his approach [e.g., by claiming a DIFFERENT TRADE CLASS] and he will re-submit his trademark application and try again.

Or, he will continue to go after internet users who visit the piracy-based websites. He will obtain subpoenas to ask Google Analytics or Cloudfront to share the IP address of the various users who visited the sites where his client’s movies were downloaded. He will then obtain their identity by determining who the ISP internet subscribers are who were assigned that IP address visiting the piracy-based website.

Once he applies this two-step solution, he will assert copyright infringement against each-and-every internet user who visits the piracy page of his client’s copyrighted movie titles.

ALTERNATIVELY:

ALTERNATIVELY: Honestly, I do not know. When I wrote the article in 2017 explaining that a copyright troll can obtain the IP address of those internet users who visit their client’s copyrighted site using Google Analytics (or now, Cloudfront), I did not anticipate that an attorney would actually do this.

There are so many thousands of users that STILL use bittorrent to download pirated movies, and the federal courts across the US are still happily entertaining bittorrent-based copyright infringement lawsuits (well, if I recall, not necessarily in Hawaii where Culpepper is located).

Thus, the whole two-step approach [of 1) obtaining the IP address of the internet user who visited the piracy-based website by sending a subpoena to Google Analytics or Cloudfront, and then 2) sending a subpoena to the ISP to determine the identity of the IP address account holder who was assigned the IP address on that particular time] seemed extremely inconvenient. I actually thought it was prohibitive at the time, so I did not think it would be done.

But Kerry Culpepper’s focus has not been only the end-users who viewed his client’s copyrighted titles without a license, but if I understand correctly, his focus is on soliciting multi-million dollar settlements from the piracy website owners, the seeders/uploaders of the copyrighted content, and those hosting the bittorrent trackers on their websites. In other words, the deep pockets. End-user internet users are merely a secondary “dessert.”

THE UNKNOWN:

THE UNKNOWN: I must also make mention that I honestly do not know what Kerry Culpepper is ever up to. As I mentioned above, he is wicked smart, and while he is brazen and makes no secrets as to what he intends to do, I can never figure out what the next FIVE OR TEN STEPS ARE that he has in mind. Because again, like a chess player, my experience in watching him over the years is that he is always thinking many steps ahead of his opponent.

Thus, I *must* assume that his most recent trademark filings have plans for both IF HE SUCCEEDS and IF HE FAILS.

I must assume that Culpepper has a plan why he wants to be rejected by the USPTO trademark examiner, e.g., so that he can USE that rejection AGAINST SOMEONE for some purpose he has already thought of (but that I cannot figure out).

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[CONTACT AN ATTORNEY: If you have a question for an attorney about what I have written here, you can e-mail us at info[at]cashmanlawfirm.com, you can set up a free and confidential phone consultation to speak to us about your DMCA settlement letter, subpoena, or lawsuit, or you can call us at 713-364-3476 (this is our Cashman Law Firm, PLLC’s number].

CONTACT FORM: If you have a question or comment about what I have written, and you want to keep it for my eyes only, please feel free to use the form below. The information you post will be e-mailed to me, and I will be happy to respond.

    NOTE: No attorney client relationship is established by sending this form, and while the attorney-client privilege (which keeps everything that you share confidential and private) attaches immediately when you contact me, I do not become your attorney until we sign a contract together.  That being said, please do not state anything “incriminating” about your case when using this form, or more practically, in any e-mail.

    Hard Drive Productions lawsuit is DEAD and Prenda attorneys still calling.

    The Hard Drive Productions, Inc. v. Does 1-1,495 (Case No. 1:11-cv-01741) case in the District of Columbia has been dead for almost a month now, and Prenda Law Inc. (now the “Anti-Piracy Law Group”) is still calling each and every dismissed defendant as if the case were still alive.

    In my opinion, these calls to dismissed defendants are indeed very concerning. The threat is that unless a dismissed defendant settled, they will immediately name and serve them in the federal court in their home state.


    HOW TO CHECK WHETHER THEIR THREATS HAVE ANY MERIT

    I have literally been hearing about these threats from dismissed defendants for weeks, and there is a VERY EASY way to test whether their threats have merit or not — simply check to see whether Hard Drive Productions, Inc. has filed lawsuits naming individuals. The easiest way to do this is to visit http://www.rfcexpress.com, scroll down on the right-hand side, and check only the “copyright” button. Type “Hard Drive Productions” into the “Party Name” field, click submit, and you’ll see the last state and the last date they filed suit against defendants. [As of 6:45pm on 1/16/2013, there have been ABSOLUTELY NO FILINGS by Hard Drive Productions, Inc. since they tried to sue defendants here in the Southern District of Texas using Doug McIntyre as their local counsel — and you know how badly that ended for them.]


    SHOULD YOU CALL THEM?

    Now this should be common sense, but you NEVER want to be calling the attorney who is threatening to sue you. Especially when you already know that their game is to extort and solicit settlements from those they believe they can scare into settling.


    CAN THEY FOLLOW-UP ON THEIR THREAT AND SUE YOU INDIVIDUALLY?

    Obviously Prenda Law Inc. (now the “Anti-Piracy Law Group”) has the capacity to name and serve many individuals in many states.  However, they are lawyers just as we are lawyers. And, whatever Prenda Law Inc. does on behalf of a client, somebody needs to pay the bill (especially if there is local counsel involved). If they are suing on behalf of Hard Drive Productions, Inc., then Hard Drive Productions, Inc. needs to pay their bills (or, you do by way of your settlements). Lawsuits are not cheap for a plaintiff, and the up-front cost of filing one ($350 per lawsuit), plus all the time drafting and responding to motions in front of a judge for each case is quite an undertaking.


    SHOULD YOU SETTLE?

    Thus, if you have no reason to settle, then don’t settle. If you see that they are naming and serving individuals, then contact one of us lawyers. Depending on your circumstances and if I can figure out a way for you to fight your case without settling, that might be the cheaper alternative. Just please don’t try to respond to their calls thinking that you’ll negotiate your way out of this. The only way to get out of this is to back them into a financial corner forcing them to drop your case, defend your case on the merits, or to pay them to make the case go away. I like any option that does not include sending them a check.


    CONTACT FORM: If you have a question or comment about what I have written, and you want to keep it *for my eyes only*, please feel free to use the form below. The information you post will be e-mailed to me, and I will be happy to respond.

      NOTE: No attorney client relationship is established by sending this form, and while the attorney-client privilege (which keeps everything that you share confidential and private) attaches immediately when you contact me, I do not become your attorney until we sign a contract together.  That being said, please do not state anything “incriminating” about your case when using this form, or more practically, in any e-mail.

      shalta boook now cta nowhitespace

      At what point does a “copyright troll” stop being a troll?

      At what point does an attorney stop being a copyright troll?

      Anyone who knows me knows that John Steele [one of the original trolls from 2010] and I are not the closest of friends. In our many conversations, I have told him quite frankly that I considered him an enemy, and I have told him [and the world] what I think about his lawsuits.  We have sparred over the years over the forums, over clients, over settlements, and to date, everyone knows what I think about his copyright trolling efforts — the “grand extortion scheme” him and his local counsel have foisted over countless victims.  Together, Steele’s law firm — whether it is under the name “Steele Law Firm, PLLC,” “Steele Hansmeier, PLLC,” “Prenda Law Inc.,” (or even more recently, “Joseph Perea, P.A.” [although I have no idea if Joseph Perea is acting on his own, or whether this is a “fake” company, and he is still working under Prenda Law Inc.]) — has inflicted painful damage over the retirement accounts and savings accounts of COUNTLESS people (many of whom had NOTHING to do with the downloading or the hacking they were accused of doing).

      The big elephant in the room has always been “open wi-fi”. Yet guilty or not, people still pay up, and John Steele profits.

      The concerning thing about John Steele is that even he refers to himself as a copyright troll, and he appears to be proud of it.  However, while the classic definition of a “troll” is an enterprising attorney who has taken advantage of the legal system (or a loophole or a weakness in it) for his client’s material benefit, I understand a “copyright troll” term in the bittorrent lawsuit context to more commonly mean “an attorney or a company who sues many internet users for the purpose of extorting multi-thousand dollar settlements from the accused, regardless of whether or not they are guilty, AND who has NO INTENTION OF MOVING FORWARD AGAINST ANY OF THOSE DEFENDANTS IN THE FORESEEABLE FUTURE.” In short, a copyright troll is someone who sues a lot of people and demands settlements through robocalls, “scare” letters, and threatening phone calls, but who has NO INTENT to move forward against those individuals should they decide not to settle.

      The problem is that I’m not so sure that definition still holds, because John Steele, along with his threateningly growing number of local counsel across the U.S. are naming defendants.

      RECAP: Initially, John Steele sued hundreds and thousands of defendants at a time, most of whom did not live in the state in which they were sued. Those were the older cases, most of which have all gone bust because the courts lacked PERSONAL JURISDICTION over the defendants. That was where we saw the “Congratulations to the Cashman Law Firm, PLLC clients who were SEVERED AND DISMISSED from [whatever] lawsuit” posts in 2010-early 2012. Then Steele smartened up. He (though his local attorneys) started filing SMALLER CASES where in many cases, the defendants lived in the states in which they were sued. Hence JURISDICTION WAS PROPER. However, even there, John Steele was still a copyright troll.

      But, eventually people caught on that JOHN STEELE WAS NOT “NAMING” ANYONE AS A DEFENDANT, and no doubt his cases lost any credibility the might have had. Even judges started calling his cases a grand extortion scheme, and even in the news today, SOME JUDGES are shutting down his cases IMMEDIATELY before you — the accused bittorrent user — learned that you are sued. In other words, their initial “MOTION FOR EARLY DISCOVERY” to send subpoenas to the ISPs to learn the identities of the IP addresses / John Doe Defendants are here-and-there beind DENIED. But even here, John Steele is still a copyright troll.

      Where John Steele loses the status of “copyright troll” is when he starts going after individual defendants in the courtroom. Once he files a First Time Videos, LLC v. James Swarez (a fictitional name), and James is now dragged into a lawsuit kicking and screaming and is forced to hire an attorney to file an “answer” with the court, and then James needs to give up his computer to some sleazy digital forensics experts hired by the attorneys (or he can hire his own), and he has to actually fight a real copyright case on the merits of whether or not he actually downloaded the copyrighted works he was accused of downloading in the lawsuit, well, at this point, John Steele is no longer a copyright troll, but rather, John Steele becomes merely a predatory attorney who is suing someone on behalf of his client for the violation of his client’s “copyright rights.”

      Now the shift that is important to note is that in the olden days, John Steele did not name anybody. He never did, and for a while, many thought he never would (except perhaps one here or there just to prove to the courts or the world that he could and would name defendants).

      However, the new strategy is that he *is* naming defendants. In fact, below is a list of defendants (for their own privacy [so that their names do not show up on search engines following this post — because PACER court documents often don’t get indexed on the search engines, but my posts do], I have edited out their last names, except for a few notorious cases) who have been named in their lawsuits (and this list is a crude list, some of which are state cases, and I even know of a few cases which are not on here):

      DEFENDANTS NAMED IN ALABAMA
      Lightspeed Media Corporation v. Dewey W., 05-CV-2012-900893 (Dewey W.)

      DEFENDANTS NAMED IN ARIZONA
      First Time Videos, LLC v. Gary P., 2:12-cv-01488-ROS (Gary P.)
      Lightspeed Media Corporation v. Adam Sekora, CV2012-053194 (Adam Sekora)

      DEFENDANTS NAMED IN CALIFORNIA
      AF Holdings LLC v. John Doe, 2:11-cv-03076-LKK-KJN (Francisco R.)
      AF Holdings LLC v. John Doe, 3:11-cv-05633-JSC (Vu C.)
      AF Holdings, LLC v. John Doe, 3:12-cv-02049-EDL (Josh H.)
      AF Holdings, LLC v. John Doe, 5:12-cv-02048-HRL (John B.)
      Boy Racer Inc. v. John Doe, 4:11-cv-06634-DMR (Daniel C.)
      Boy Racer, Inc. v. John Doe, 1:11-cv-01935-LJO-SKO (Anthony N.)
      Boy Racer, Inc. v. John Doe, 3:11-cv-05628-JCS (Samuel T.)
      Boy Racer, Inc. v. Philip W., 2:11-cv-03072-MCE-KJN (Philip W.)
      Hard Drive Productions, Inc. v. John Doe, 2:11-cv-03074-KJM-CKD (Jeff G.)
      Hard Drive Productions, Inc. v. John Doe, 2:11-cv-03075-JAM-JFM (Kenneth S.)
      Hard Drive Productions, Inc. v. John Doe, 3:11-cv-05634-JCS (Seth Abrahams)
      Hard Drive Productions, Inc. v. John Doe, 4:11-cv-03826-DMR (Soukha P.)
      Hard Drive Productions, Inc. v. John Doe, 4:11-cv-05630-YGR (Liuxia Wong)
      Hard Drive Productions, Inc. v. John Doe, 5:11-cv-05631-PSG (Isaac K.)
      Lightspeed Media Corporation v. Reza S., 37-2012-00100384-CU-BC-CTL (Reza S.)
      Millennium TGA, Inc. v. John Doe, 2:11-cv-03080-MCE-KJN (Joe V.)
      Millennium TGA, Inc. v. John Doe, 3:12-cv-00792-MMA (Tyree P.)
      Pink Lotus Entertainment, LLC v. John Doe and Steve P., 2:11-cv-03073-WBS-KJN (Steve P.)
      Pink Lotus Entertainment, LLC v. John Doe, 2:11-cv-03077-JAM-KJN (Jason A.)
      Lightspeed Media Corporation v. Myron H., 12-CV-0952 (Myron H.)

      DEFENDANTS NAMED IN ILLINOIS
      First Time Videos LLC v. John Doe, 1:11-cv-08334 (Arthur S.)
      First Time Videos LLC v. John Doe, 1:11-cv-08335 (Arthur H.)
      First Time Videos LLC v. John Doe, 1:11-cv-08336 (Christopher P.)
      Hard Drive Productions, Inc. v. John Doe, 1:11-cv-08333 (Jason S.)
      Hard Drive Productions, Inc. v. John Doe, 1:11-cv-08337 (Jamie P.)
      Hard Drive Productions, Inc. v. John Doe, 1:11-cv-08339 (Gerald G.)
      Hard Drive Productions, Inc. v. John Doe, 1:11-cv-08340 (Edward N.)
      Hard Drive Productions, Inc. v. John Doe, 1:11-cv-08341 (Erik S.)
      Hard Drive Productions, Inc. v. John Doe, 1:11-cv-08342 (Stilan P.)
      Hard Drive Productions, Inc. v. John Doe, 1:11-cv-08343 (Hyung K.)
      Hard Drive Productions, Inc. v. John Doe, 1:12-cv-01053-MMM-JAG (Matt R.)
      Hard Drive Productions, Inc. v. John Doe, 1:12-cv-01104 (Robert R.)
      Pink Lotus Entertainment, LLC v. John Doe, 1:11-cv-08338 (Klint C.)
      Lightspeed Media Corporation v. Lucas S.,2012L000927 (Lucas S.)
      Lightspeed Media Corporation v. Michael A., 2012L000530 (Michael A.)
      Lightspeed Media Corporation v. Ronald T., 2012L000531 (Ronald T.)
      Lightspeed Media Corporation v. Tom B., 2012L95 (Tom B.)

      DEFENDANTS NAMED IN NEVADA
      Lightspeed Media Corporation v. Adam G., CI12-2625 (Adam G.)

      DEFENDANTS NAMED IN TEXAS
      First Time Videos, LLC & AF Holdings, LLC v. John Doe, 4:12-cv-00535 (Tingwei & Chinatsu L.)
      Lightspeed Media Corporation v. Austin C., C-133,846 (Austin C.)
      Pacific Century International, LTD v. John Doe, 4:12-cv-00536 (Stephen C.)
      Lightspeed Media Corporation v. W.T., Inc., CV2012-053230(W.T., Inc.)

      In sum, as you can see, John Steele (through Prenda Law Inc. and his local counsel) are naming defendants, and one-by-one, they are hiring new counsel in a number of states to file against individuals. Now does this mean that John Steele is no longer a copyright troll? Maybe, maybe not. The point is that he is taking the “next step,” and he is forcing more and more individuals into litigation.  This is a concerning trend.

      MY OPINION: Will he come after you? Quite frankly, with the tens of thousands of individuals he has sued, this small list is only a sliver of the huge pool of defendants who have been sued (NOT “NAMED”), who have been dismissed, and who are somewhere in between. The point though, is that while once upon a time John Steele did not name defendants, now he does.

      On a personal note, I am saddened by writing this post, and as much as I always love to write the “we won!” articles (and THERE ARE SO MANY OF THOSE OUT THERE that don’t make it onto this blog), a defendant that calls my office needs to understand that there IS a risk that they might be named as a defendant at some point in the future. As we have said before, it is important that both current defendants AND DISMISSED DEFENDANTS should keep an eye out for Prenda Law Inc. filings in their state. The way they can do this is by going to the http://www.rfcexpress.com website, and watching what is going on in their state. Until a Prenda Law Inc. client (e.g., Hard Drive Productions, AF Holdings, First Time Videos, LLC) files against a John Doe or against a named defendant in a particular state, it is safe to assume they are not yet there and quite frankly, in my opinion, the risk of getting “named” is quite low. But then again, you need to be vigilant even after a dismissal, and for this reason, I have written this blog post.  This simply was not the case just a few months ago.

      AF Holdings, LLC v. Does 1-1,140 — Dismissed, but according to the plaintiff’s plan.

      On Friday I wrote a scathing review of the AF Holdings, LLC v. Does 1-1,140 (Case No. 1:11-cv-01274) case dismissal, but I did not post it.  In short, congratulations to the Cashman Law Firm, PLLC clients (and all the others implicated in this case) who have been dismissed from the case.

      The difficulty I am facing is that while being dismissed is the goal of any John Doe defendant in a bittorrent case, in my opinion, I am uncomfortable with the way the dismissal happened. 

      As many of you know, there was new precedent set by Judge Facciola’s ruling in the West Coast Productions, Inc. v. Does 1-1,434 (Case No. 1:11-cv-00055) case, and as a result, Judge Reggie Walton gave the plaintiffs until March 9th, 2012 to start naming or dismissing defendants.  In short, instead of admitting improper jurisdiction, yet another D.C. judge opted to invoke the Federal Rules of Civil Procedure, Rule 4(m) which gives plaintiffs 120 days to either name or dismiss defendants.  Understanding that the Prenda Law Inc. plaintiff attorneys had no interest in continuing the lawsuit against individual Doe defendants, they dismissed the case.

      Now while it is always nice when opposing counsel opts to kill a case rather than move forward against defendants, Prenda Law Inc.’s local counsel revealed more than he probably should have to the court.  In a move which probably angered Paul Duffy and his superiors, Tim Anderson wrote the following paragraph:

      Plaintiff acknowledges the Court’s busy docket; Plaintiff is currently engaged in settlement negotiations with a substantial number of putative Doe Defendants.  Rather than prematurely initiate litigation against individuals who may ultimately wish to resolve Plaintiff’s claims via settlement — and thus needlessly burden the Court — Plaintiff believes that dismissing the claims against the remaining non-settling Doe Defendants in this action without prejudice in lieu of filing actions against non-settling individuals strikes a favorable balance between preserving Court resources and safeguarding its intellectual property rights.

      In other words, “Court, we are dismissing the case so that you do not need to waste your time looking over us watching what we are doing.  We would prefer not to have you watch us anyway because you will force us to do something we don’t want to do (e.g., “name” defendants), which would make our extortion scheme much more costly to us and thus we wouldn’t be able to sustain our operation if we had to actually go after defendants.  So thanks to you, since we now have all the names we need from the ISPs of the putative Doe Defendants, we will continue to call and harass those who haven’t settled without having you worry about what we are doing.”

      In short, I would have liked to see the judge issue an order indicating that since they have dismissed the case, they are no longer permitted to use the names they acquired from the subpoenas and collect settlements from putative defendants.  The legal system is not a tool to discover private information about internet subscribers only to dismiss the case and continue their extortion scheme offline.

      For this reason, I suspect that you understand why I am not so happy with this case dismissal.  Getting your names only to dismiss the action was simply part of their plan all along.

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