United States District Court, D. Minnesota
Gislason, for Plaintiff
FRANKLIN L. NOEL UNITED STATES MAGISTRATE JUDGE
MATTER came before the undersigned United States Magistrate
Judge on Plaintiff's ex parte motion for leave to serve a
third-party subpoena prior to a Rule 26(f) conference (ECF
No. 5). For the reasons set forth below, Plaintiff's
motion is DENIED.
is the owner of “award winning, critically acclaimed
adult motion pictures.” ECF No. 1 at ¶ 3.
Plaintiff's motion pictures are distributed on the
internet through various adult websites, “Blacked,
Tushy, Vixen, and Blacked Raw[, ]” and are available
for purchase on DVD. Id. On March 21, 2018,
Plaintiff initiated this suit against the unnamed Defendant,
raising one copyright infringement count under 17 U.S.C.
§§ 106(1) and 501. Id. Plaintiff's
Complaint alleges that Defendant, using the BitTorrent
protocol, committed “rampant and wholesale copyright
infringement by downloading [Plaintiff's] motion pictures
as well as distributing them to others.” Id.
at ¶ 4. Plaintiff claims that Defendant infringed
“44 movies over an extended period of time.”
“only knows Defendant by his or her Internet Protocol
[(“IP”)] address.” ECF No. 7 at 1.
Defendant's IP address was ascertained by IPP
International U.B., Plaintiff's investigator, who found
that an “IP address [believed to be connected to
Defendant] was illegally distributing several of
[Plaintiff's] motion picturers.” Id. In
the instant ex parte motion, Plaintiff seeks leave
to serve “limited, immediate discovery on
Defendant's [Internet Service Provider
(“ISP”)] Comcast Cable Communications, LLC
(“Comcast”).” Id. at 2. To that
end, Plaintiff moves to serve a subpoena, pursuant to Federal
Rule of Civil Procedure 45, on Comcast. Id.
Plaintiff's Rule 45 subpoena “will only demand the
true name and address of Defendant.” Id.
Plaintiff represents that it will “only use this
information to prosecute the claims made in its
Complaint.” Id. Plaintiff claims that without
this information, it “cannot serve Defendant nor pursue
this lawsuit and protect its copyrights.” Id.
ex parte motion illustrates an ongoing conflict
between the Digital Millennium Copyright Act (DMCA), 17
U.S.C. § 512, the Communications Act, 47 U.S.C. §
551, and Federal Rule of Civil Procedure 45. At the heart of
this conflict is whether a copyright owner can use the
federal judiciary to discover evidence about a potential,
alleged infringer when the infringer's actual identity is
unknown. This friction has been exacerbated by the
proliferation of, beginning with Napster, peer-to-peer or
file sharing computer programs.
1998, Congress enacted DMCA as a legislative compromise to
this conflict. DMCA permitted copyright owners to obtain and
serve subpoenas on ISPs to ascertain information about an ISP
subscriber alleged to be illegally transmitting copyrighted
works via the internet. “DMCA was the product of
lengthy negotiations between copyright owners and [ISPs]. It
was designed to strike a balance between the interests of
ISPs in avoiding liability for infringing use of their
services and the interest of copyright owners in protecting
their intellectual property and minimizing online
piracy.” In Re Charter Commc'n, 393
F.3d 771, 774 (8th Cir. 2005).
permits the clerk of court for a given federal district
“to issue a subpoena to a service provider for
identification of an alleged infringer.” 17 U.S.C.
§ 512(h). However, in In Re Charter
Communications, the Eighth Circuit held that DMCA's
subpoena provision did not apply to a “copyright owner
. . . request[ing] a subpoena for an ISP which merely acts as
a conduit for data transferred between two internet
users.” 393 F.3d at 776. Put differently, DMCA does not
apply to the facts of the instant case because Comcast, the
ISP Plaintiff seeks to subpoena, is acting only as a conduit
for data transferred between two internet users. In Re
Charter Communications effectively precludes an alleged
infringement victim from invoking DMCA to obtain a subpoena
to identify infringers using peer-to-peer file
sharing. 393 F.3d 777.
Re Charter Communications relied heavily on the D.C.
Circuit's reasoning in Recording Industry Association
of America v. Verizon Internet Service Incorporated, 351
F.3d 1229, 1232 (D.C. Cir .2003), cert denied, 125
S.Ct. 347 (2004). Id. In Verizon, the D.C.
Circuit reasoned that it is the province of Congress, not the
federal judiciary, to determine whether to amend DMCA
“in order to make it fit a new and unforeseen internet
architecture” and “accommodate fully the varied
permutations of competing interests that are inevitably
implicated by such new technology” attendant to the
increased use of peer-to-peer file sharing protocols. 351
F.3d at 1238.
than invoke the direct subpoena provision of DMCA, Plaintiff
here filed a lawsuit against John Doe, then filed the instant
ex parte motion to serve expedited discovery on the
third-party ISP, Comcast. Plaintiff is seeking to serve the
subpoena under Federal Rule of Civil Procedure 45 to
ascertain what it describes as Defendant's name and
address. However, that very requested material,
disclosure of a cable subscriber's personally
identifiable information, is protected under another federal
law, the Communications Act. See 47 U.S.C. §
551(c). Specifically, a cable operator, such as Comcast here,
“shall not disclose personally identifiable information
concerning any subscriber without the prior written or
electronic consent of the subscriber concerned.” 47
U.S.C. § 551(c)(1). Furthermore, the Communications Act
prohibits a cable provider from disclosing the “extent
of any viewing or other use by the subscriber of a cable
service or other service provided by the cable
operator.” 47 U.S.C. § 551(c)(2)(C)(ii)(I). Again,
as is the case with DMCA, the conundrum here is that the
information Plaintiff seeks through a Rule 45 subpoena poses
a direct conflict between Plaintiff's property interest
and Defendant's privacy protections afforded under
federal law in the Communications Act. This direct conflict
between DMCA and the Communications Act was argued by the
parties in In Re Charter Communications. However, as
the Eighth Circuit quashed the subpoena on other grounds, it
never reached or resolved this issue.
Court concludes that the conflict between the statutes, DMCA
and the Communications Act, compels it to deny
Plaintiff's instant ex parte motion. As the
Eighth Circuit reasoned in In Re Charter
Communications, when it held that DMCA did not authorize
the subpoena the district court had issued, “it is the
province of Congress, not the courts, to decide whether to
rewrite DMCA ‘in order to make it fit a new and
unforseen internet architecture.'” 393 F.3d at 777
(quoting Verizon, 351 F.3d at 1238).
Court is mindful of footnote three in In Re Charter
Communications. 393 F.3d at 777 n.3. In dicta, the
Eighth Circuit suggested that the procedure adopted here, use
of a Rule 45 subpoena in a John Doe lawsuit, is an
appropriate work-around of its holding that DMCA does not
apply to the subpoena it quashed. The dicta in footnote
three, however, ignores the requirements of Federal Rule of
Civil Procedure 10(a) that a complaint must name all of the
parties. Moreover, footnote three is not a holding. In this
Court's view, footnote three does not compel it to permit
the issuance of the requested subpoena here. Finally, that
the Eighth ...