United States District Court, D. Minnesota
Gislason, Esq., Fox Rothschild LLP, counsel for Plaintiff.
R. THORSON UNITED STATES MAGISTRATE JUDGE
Strike 3 Holdings, LLC (“Strike 3”) moves ex
parte for leave to conduct early discovery via a
third-party subpoena directed to Defendant's Internet
Service Provider (“ISP”), Comcast Cable
Communications, LLC (“Comcast Cable”). (Doc. No.
4.) For the reasons stated below, Strike 3's motion is
GRANTED IN PART and DENIED IN
3 is the owner of several adult motion pictures. (Doc. No. 1,
Compl. ¶ 2.) Strike 3 has filed many copyright
infringement cases, including eight in the District of
Minnesota. See Civil Case Nos. 18-cv-768 (DSD/FLN),
18-cv-771 (DWF/HB), 18-cv-773 (JRT/DTS), 18-cv-774 (DWF/DTS),
18-cv-775 (PJS/SER), 18-cv-778 (PJS/HB), 18-cv-779 (WMW/SER).
Strike 3 has hired an investigator, IPP International U.G.,
to monitor and detect the infringement of Strike 3's
content. IPP discovered that Defendant's IP address was
illegally distributing several of Strike 3's motion
pictures. Strike 3's independent forensic expert, John S.
Pasquale, reviewed the evidence captured by IPP and confirmed
that Defendant's IP address was involved in infringing
transactions at the exact date and time reported by IPP.
(See Doc. No. 11, Declaration of John S. Pasquale
(“Pasquale Decl.”); Doc. No. 1-1, Compl., Ex. A.)
point, Strike 3 only knows that infringement is associated
with a particular IP address. This IP address is assigned to
a subscriber by Comcast Cable. Strike 3 alleges that the
Defendant subscriber, identified as John Doe in the
Complaint, infringed its copyrights. Comcast Cable is the
only entity with the information necessary to identify
Defendant by correlating the IP address with John Doe's
identity. Thus, Strike 3 seeks leave to serve a Rule 45
subpoena on Comcast Cable so Strike 3 may learn Defendant
subscriber's identity, investigate Defendant's role
in the infringement, and effectuate service. Strike 3
represents that the subpoena will only demand the true name
and address of Defendant, and Strike 3 will use this
information only to prosecute the claims in its Complaint.
(Doc. No. 6, Def.'s Mem. 6.)
generally may not “seek discovery from any source
before the parties have conferred as required by Rule
26(f).” Fed.R.Civ.P. 26(d)(1). Courts in the Eighth
Circuit have used a “good cause” standard to
determine whether expedited discovery is appropriate. See
Wachovia Sec. v. Stanton, 571 F.Supp.2d 1014, 1049 (N.D.
Iowa 2008). In infringement cases, for example, courts
“have allowed expedited discovery . . . when the
identity of the infringing defendant is masked by the
defendant's use of technology or third-parties to hide
their true identities.” United Pet Grp., Inc. v.
Does, No. CV 4:13-01053 AGF, 2013 WL 4482917, at *1
(E.D. Mo. Aug. 20, 2013). Courts consider the following
factors in deciding whether to allow early discovery to
ascertain the identity of an anonymous copyright infringer:
(1) the concreteness 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.
Arisa Records, LLC v. Doe 3, 604 F.3d 110, 119 (2d
Cir. 2010). Analyzing these factors, the Court concludes that
Plaintiff is entitled to early discovery to ascertain the
identity of the alleged infringer.
The concreteness of the plaintiff's showing of a prima
facie claim of actionable harm. Strike 3 has stated
a prima facie claim for copyright infringement, the elements
of which are ownership of a valid copyright and copying of
original elements of the copyrighted work. Warner Bros.
Entm't, Inc. v. X One X Prods., 644 F.3d 584, 595
(8th Cir. 2011). Strike 3 alleges that Defendant used the
BitTorrent file network to illegally download and distribute
its copyrighted motion pictures. (See Compl. ¶
23.) This is sufficient to state a prima facie claim.
(See also Compl. ¶ 27 (“Defendant
downloaded, copied, and distributed a complete copy of
Plaintiff's Works without authorization.”); Compl.
¶ 31 (“Plaintiff owns the copyrights to the Works
and the Works have either been registered with the United
States Copyright Office or have pending copyright
The specificity of the discovery request. Strike
3's discovery request is narrow and specific, seeking
Plaintiff's name and address only. See, e.g.,
John Wiley & Sons, Inc. v. Doe, 284 F.R.D. 185,
190 (S.D.N.Y. 2012) (denying motion to quash because the
“request is specific, as it seeks concrete and narrow
information: the name and address of the subscriber
associated with [the] IP address, which Wiley alleges was
used to infringe its copyright”).
The absence of alternative means to obtain the subpoenaed
information. The Digital Millennium Copyright Act
(“DMCA”) provides that a copyright owner
“may request the clerk of any United States district
court to issue a subpoena to a service provider for
identification of an alleged infringer in accordance with
this subsection.” 17 U.S.C. § 512(h)(1). However,
the Eighth Circuit has held that this provision “does
not allow a copyright owner to request a subpoena for an ISP
which merely acts as a conduit for data transferred between
two internet users.” In re Charter
Commc'n, 393 F.3d 771, 776 (8th Cir. 2005). This is
because the “text and structure of the DMCA require the
ISP to be able to both locate and remove the allegedly
infringing material before a subpoena can be issued against
it.” Id. at 776-77. As in In re Charter
Commc'n, Comcast is acting “solely as a
conduit for the transmission of material by others (its
subscribers using P2P file-sharing software to exchange files
stored on their personal computers).” Id. at
777. Therefore, the subpoena provision in the DMCA is
unavailable, and a Rule 45 subpoena is the only avenue to
discover the subscriber associated with the infringing IP
address. See John Wiley, 284 F.R.D. at 190
(explaining that the use of BitTorrent software is
“largely anonymous except insofar as it requires a user
to broadcast the user's IP address”).
The need for the subpoenaed information to ...