United States District Court, S.D. New York
September 7, 2004.
ELEKTRA ENTERTAINMENT GROUP, INC., Plaintiff,
DOES 1-9, Defendants.
The opinion of the court was delivered by: ROBERT SWEET, Senior District Judge
Defendant Doe No. 7 has moved pursuant to Fed.R. Civ. P.
45(c)(3)(A)(iii) to quash the subpoena served upon New York
University ("NYU"), and pursuant to Fed.R. Civ. P. 20 and 21 to
sever Doe No. 7 from this action and to require plaintiffs to
file a separate action against him. Doe No. 7 also moves to
dismiss the complaint against him for lack of personal
jurisdiction. For the reasons set forth below, the motion to
quash is denied, as is the motion to dismiss. The motion to sever
Doe No. 7 is granted.
Plaintiffs Elektra Entertainment Group Inc. ("Elektra"),
Capitol Records, Inc. ("Capitol"), Atlantic Recording Corp.
("Atlantic"), Interscope Records ("Interscope"), Arista Records,
Inc. ("Arista"), Motown Record Company, L.P. ("Motown"), Warner
Bros. Records Inc. ("Warner Bros."), UMG Recordings, Inc.
("UMG"), Maverick Recording Co. ("Maverick"), Sony Music
Entertainment Inc. ("Sony"), Virgin Records America, Inc.
("Virgin"), BMG Music ("BMG") (collectively, the "plaintiffs")
are major recording companies who own copyrights in sound
recordings. According to the complaint, the defendants are or were active
participants in Fast Track, a peer-to-peer ("P2P") network. A P2P
network is an online media distribution system that allows users
to have their computers function as an interactive Internet site,
disseminating files for other users to copy. Each defendant is
alleged to have offered copyrighted sound recordings stored on
his or her computer for others to download and to have downloaded
copyrighted sound recordings from other users of the Fast Track
On March 23, 2004, plaintiffs filed their complaint. On March
25, 2004, this Court granted plaintiffs' ex parte motion to
take expedited discovery, which was narrowly targeted to
identifying the defendants. According to plaintiffs, NYU has
matched the IP addresses to its list of computer users and
notified the defendants that plaintiffs sought their
identification in connection with this case. Of the 9 defendants,
only Doe No. 7 has filed a motion to quash. NYU has informed
plaintiffs that NYU will not produce the identities of any of the
defendants until this motion has been resolved.
Doe No. 7 served this motion on opposing counsel on April 28, 2004. After exchange of briefs, argument was heard on
the motion on May 5, 2004, at which time the motion was deemed
The plaintiffs allege that they have found each of the
defendants openly disseminating sound recordings whose copyrights
they own on the P2P network. Plaintiffs themselves logged on to
the P2P network and viewed the files that each defendant was
offering to other users. According to plaintiffs, each defendant
has chosen to make available from his or her computer hundreds of
sound recordings whose copyrights are owned by various of the
Doe No. 7 is alleged to be a user of the Kazaa system, one of
the most popular forms of peer-to-peer software. Users of the
Kazaa system connect to the Fast Track network, as do all of the
defendants in this case.
While plaintiffs were able to gather significant information
about the defendants' allegedly infringing conduct, they were not
able to ascertain the name, address or any other contact
information for any of the defendants. Instead, plaintiffs could only identify the Internet Protocol ("IP")
address from which each defendant was disseminating plaintiffs'
An IP address is a 10-digit number that specifically identifies
a particular computer using the Internet. Using the IP address,
plaintiffs determined that each defendant was using NYU's network
facilities to disseminate the plaintiffs' copyrighted works. From
the IP address provided by plaintiffs, NYU can match the IP
address, date and time with the computer that was using the IP
address when plaintiffs observed the alleged infringement. NYU is
therefore the only entity that can identify the defendants in
NYU's "Guidelines for Compliance With the Family Educational
Rights and Privacy Act" (the "privacy guidelines") state that NYU
will release identifying information without the consent of the
student in response to a civil subpoena "provided that the
University attempts to notify the student of the order or
subpoena before complying with it . . ."
http://www.nyu.edu/apr/ferpa.htm. NYU's Information Technology
Services includes among the "responsibilities of all NYU computer
and network users" that each account holder "will respect the
rights of copyright owners, and, when appropriate, obtain permission from owners before using or copying protected material
. . ." http://www.nyu.edu/its/policies/respon.html.
Rule 45(c)(3)(A)(iii) provides that a court shall quash or
modify a subpoena if it "requires disclosure of privileged or
other protected matter and no exception or waiver applies." Doe
No. 7 argues that because the First Amendment protects the right
to speak and to use the Internet anonymously, Doe No. 7 has a
qualified privilege, and that plaintiffs' allegations are
insufficient to overcome the privilege.
In this district, the Honorable Denny Chin recently considered
a substantively identical motion to quash involving many of the
same plaintiffs, and a group of anonymous defendants, all of whom
subscribed to the same Internet service provider, or ISP. See
Sony Music Entertainment Inc. v. Does 1-40, 04 Civ. 473, 2004
WL 1656538 (S.D.N.Y. July 26, 2004). Judge Chin's analysis is
highly persuasive, and the rationale and resolution of the motion
in Sony Music will be adopted here.
Judge Chin first recognized that "the First Amendment protects
anonymous speech." Id. at *4 (citing Buckley v. American Constitutional Law Found., 525 U.S. 182, 200 (1999);
McIntyre v. Ohio Elections Comm'n, 514 U.S. 334, 357 (1995)).
Further, "the First Amendment's protection extends to the
Internet." Id. at *5 (citing Reno v. ACLU, 521 U.S. 844, 870
(1997); In re Verizon Internet Servs., Inc.,
257 F. Supp. 2d 244, 259 (D.D.C. 2000), rev'd on other grounds, Recording
Indus. Ass'n of America, Inc. v. Verizon Internet Servs., Inc.,
351 F.3d 1229 (D.C. Cir. 2003)).
First Amendment protection of anonymous speech, like other
kinds of speech, is subject to limits. Most importantly in the
present context, the First Amendment "does not protect copyright
infringement." Id. (citing Harper & Row Publishers, Inc. v.
Nation Enters., 471 U.S. 539, 555-56 (1985); Universal City
Studios, Inc. v. Reimerdes, 82 F. Supp. 2d 211, 220 (S.D.N.Y.
2000) ((the "Supreme Court . . . has made it unmistakably clear
that the First Amendment does not shield copyright
The protection offered by the First Amendment is implicated
when the identities of anonymous speakers are sought through
civil subpoena. See NAACP v. Alabama ex rel. Patterson,
357 U.S. 449, 462 (1958) (order requiring association to produce
membership list interfered with First Amendment freedom of association).
In addition to the case before Judge Chin, several courts have
considered motions to quash subpoenas seeking identifying
subscriber information from ISPs, reaching different results.
See, e.g., Verizon, 257 F. Supp. 2d at 267-68 (denying
ISP's motion to quash subpoena served pursuant to the Digital
Millennium Copyright Act ("DMCA"), 17 U.S.C. § 512(h), seeking
subscriber information about alleged copyright infringers); In
re Subpoena Duces Tecum to America Online, Inc., No. 405070,
2000 WL 1210372, at *1 (Va. Cir. Ct. Jan. 31, 2000), rev'd on
other grounds America Online, Inc. v. Anonymous Publicly Traded
Co., 261 Va. 350, 542 S.E.2d 377 (Va. 2001) (denying motion to
quash subpoena seeking identity of anonymous defendants who
allegedly defamed plaintiff and disclosed insider information);
Doe v. 2TheMart.com, 140 F. Supp. 2d 1088, 1097 (W.D. Wash.
2001) (granting motion to quash subpoena seeking identities of
non-party anonymous posters to Internet chat room); Anderson v.
Hale, No. 00 C 2021, 2001 WL 503045, at *9 (N.D. Ill. May 10,
2001) (granting motion to quash subpoena seeking identity of
anonymous members of church).
In Sony Music, Judge Chin persuasively held that "the use of
P2P file copying networks to download, distribute, or make available for distribution copyrighted sound recordings, without
permission . . . qualifies as speech, but only to a degree." 2004
WL 1656538, at *6. Judge Chin first noted that the person
engaging in file sharing is "not seeking to communicate a thought
or convey an idea. Instead, the individual's real purpose is to
obtain music [free of charge]." Id.
However, an argument may be made that a file sharer
is making a statement by downloading and making
available to others copyrighted music without charge
and without license to do so. Alternatively, the file
sharer may be expressing himself or herself through
the music selected and made available to others.
Id. The use of a P2P network for file sharing, therefore,
qualifies as speech for First Amendment purposes, although it is
not "political expression," and is therefore not "afforded the
broadest protection." McIntyre, 514 U.S. at 346; see also
Verizon, 257 F. Supp. 2d at 260 ("there is some level of First
Amendment protection that should be afforded to anonymous
expression on the Internet, even though the degree of protection
is minimal where alleged copyright infringement is the expression
The Need for Disclosure Outweighs the Defendants' First
In considering whether the defendants' identities were
protected from disclosure by the First Amendment, Judge Chin
considered five factors: 1) whether plaintiffs have made "a concrete 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) "a
central need to obtain the subpoenaed information to advance the
claim"; and 5) "the party's expectation of privacy." Sony
Music, 2004 WL 1656538, at *7 (citing Columbia Ins. Co. v.
Seescandy. com, 185 F.R.D. 573, 577-81 (N.D. Cal. 1999);
America Online, 2000 WL 1210372, at *8; Verizon,
257 F. Supp. 2d at 260-61, 267-68; Dendrite Int'l, Inc. v. Doe,
342 N.J. Super. 134, 775 A.2d 756, 760-61 (N.J.Super.Ct. App. Div.
Each factor favors the disclosure of the defendants'
identities. First, plaintiffs have made a showing of copyright
infringement. "A prima facie claim of copyright infringement
consists of two elements: `(1) ownership of a valid copyright,
and (2) copying of the constituent elements of the work that are
original.'" Id. (quoting Arden v. Columbia Pictures Indus.,
Inc., 908 F. Supp. 1248, 1257 (S.D.N.Y. 1995). Plaintiffs have
alleged that they are the copyright owners of the sound
recordings which Doe No. 7 is alleged to have copied. Further,
plaintiffs have submitted the "screen shots" of Doe No. 7's
"share folder" showing the computer files disseminated through
Kazaa. Plaintiffs downloaded a sample of these files an
determined that they were the sound recordings for which plaintiffs own the copyrights. Further, plaintiffs obtained
"metadata" about the files that Doe No. 7 was disseminating,
often reveal who originally copied a particular sound
recording from a CD to a computer disk (a process
called "ripping") and provide a type of digital
fingerprint, called a "hash," that can show whether
two users obtained a file from the same source.
Plaintiffs' Brief at 8. Using the metadata associated with the
music filed that Doe No. 7 was offering for distribution on
Kazaa, plaintiffs have determined that many sound recordings were
ripped by different people using different brands of ripping
software. Such information creates a strong inference that Doe
No. 7 was not simply copying his or her own lawfully purchased
CDs onto a computer, but had downloaded those files from other
P2P users. Because "the use of P2P systems to download and
distribute copyrighted music has been held to constitute
copyright infringement," Sony Music, 2004 WL 1656538, at *8
(citing A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004
1013-14 (9th Cir. 2001); In re Aimster Copyright Litigation,
334 F.3d 643
, 653 (7th Cir. 2003)), plaintiffs have adequately
pled copyright infringement to establish a prima facie claim.
Second, plaintiffs' discovery request is sufficiently specific.
Plaintiffs seek only to identify the defendants in order to serve
process, based on the date and time when they downloaded or distributed specific copyrighted sound recordings.
Third, plaintiffs have demonstrated the absence of alternative
means to obtain the subpoenaed information. With the publicly
available information relating to Doe No. 7's IP address,
plaintiffs were only able to ascertain that Doe No. 7 was using
NYU's network facilities, and that such facilities are limited to
members of the "NYU community." Only NYU, however, can identify
Doe No. 7 and the other defendants with sufficient specificity to
Fourth, plaintiffs have shown that they have a central need to
obtain the subpoenaed information to advance the claim.
"Ascertaining the identities and residences of the Doe defendants
is critical to plaintiffs' ability to pursue litigation, for
without this information, plaintiffs will be unable to serve
Finally, Doe No. 7 is entitled to only a minimal "expectation
of privacy in downloading and distributing copyrighted songs
without permission." Id. (citing Verizon,
257 F. Supp. 2d at 260-61, 267-68). NYU's privacy guidelines state that
it will comply with a civil subpoena seeking identifying information
without a student's consent provided that the student is first notified of the request. And NYU's Network
Responsibilities state that users must obtain the permission of
copyright owners before copying protected material.
Because each of the factors favors disclosure, Doe No. 7's
"First Amendment right to remain anonymous must give way to
plaintiffs' right to use the judicial process to pursue what
appear to be meritorious copyright infringement claims." Id. at
*9. The motion to quash the subpoena is denied, as is Doe No. 7's
request for attorney's fees to contest the subpoena.
Doe No. 7's Challenge to Personal Jurisdiction is Premature
Doe No. 7 has also argued that plaintiffs have not established
that personal jurisdiction may be exercised over him or her. Doe
No. 7 argues that although the plaintiffs have traced the IP
address used by Doe No. 7 to NYU, "that does not automatically
mean that the defendants can be found in New York." Doe No. 7's
Brief at 15. While that may be true, a ruling on personal
jurisdiction at this stage in the litigation is premature:
[W]ithout the identifying information sought by
plaintiffs in the [NYU] subpoena, it would be
difficult to assess properly the existence of
personal jurisdiction over the Doe defendants. This
analysis requires an evaluation of the contacts
between the various defendants and the forum state. Id. (citing LiButti v. United States,
178 F.3d 114, 122 (2d Cir. 1999)). Doe No. 7's motion is
accordingly denied, with leave to renew following
Doe No. 7's Motion for Severance is Granted
Doe No. 7 argues that the joinder of the seven Doe defendants
is improper because the only common element between the
defendants is their alleged use of the NYU networks. Doe No. 7
therefore moves pursuant to Fed.R. Civ. P. 20 to be severed from
this action, and further requests that the Court order all
defendants severed and order the plaintiffs to commence separate
actions against each defendant.
Federal Rule of Civil Procedure 20 lays out the requirements
for the permissive joinder of defendants:
All persons . . . may be joined in one action as
defendants if there is asserted against them jointly,
severally, or in the alternative, any right of relief
in respect of or arising out of the same transactions
or occurrences and if any question of law or fact
common to all defendants will arise in the action.
"[T]he remedy for improper joinder is severance . . ." Sony
Music, 2004 WL 1656538, at *9 (citing Fed.R. Civ. P. 21).
"[D]istrict courts have broad discretion to decide whether
joinder is appropriate, even when the requirements of Rule 20(a) have been met." Ghaly v. U.S. Department of
Agriculture, 228 F. Supp.2d 283, 292 (S.D.N.Y. 2002) (citing
Briarpatch Ltd. v. Pate, 81 F. Supp. 2d 509, 515 (S.D.N.Y.
2000)). "The well-established policy underlying permissive
joinder is to promote trial convenience and expedite the
resolution of lawsuits." Puricelli v. CNA Ins. Co.,
185 F.R.D. 139, 142 (N.D.N.Y. 1999) (citing Blesedell v. Mobil Oil Co.,
708 F. Supp. 1408, 1421 (S.D.N.Y. 1989)). The Supreme Court has
held that "the impulse [under the Federal Rules] is toward
entertaining the broadest possible scope of action consistent
with fairness to the parties; joinder of claims, parties and
remedies is strongly encouraged." United Mineworkers of America
v. Gibbs, 383 U.S. 715, 724 (1966).
"Courts have generally adopted a case-by-case approach in
determining whether plaintiffs' claims constitute a `single
transaction or occurrence' for purposes of Rule 20." Puricelli,
185 F.R.D. at 142 (citing Mosley v. General Motors Corp.,
497 F.2d 1330, 1332 (5th Cir. 1974); Blesedell,
708 F. Supp. at 1412). However, in defining transaction or occurrence,
"courts have found Fed.R. Civ. P. 13(a) to be particularly instructive,
and have concluded with reference to that Rule that the phrase
encompasses `all logically related claims.'" Id. (quoting
Mosley, 497 F.2d at 1333). Plaintiffs argue that the claims against each defendant involve
common questions of copyright law and common questions of fact
concerning the operation of NYU's network and the Fast Track
network. Further, plaintiffs argue that the claims are logically
related by the use of the Fast Track network.
Doe No. 7 argues that plaintiffs have not asserted any right to
relief against all defendants "jointly, severally or in the
alternative," that there is no transaction or occurrence common
to Doe No. 7 and the other defendants, and that beyond the use of
NYU's network and the Fast Track network, there are no factual
commonalities. In addition, Doe No. 7 notes that only six of the
twelve plaintiffs have alleged that Doe No. 7 infringed the
copyrights on their sound recordings.
At least two district courts have ordered severance in similar
suits. In BMG Music v. Does 1-203, Civil Action No. 04-650,
(E.D. Pa. March 5, 2004), reconsidered and aff'd, April 5,
2004, the court found:
The claims against the different Defendants will
require separate trials as they may involve separate
witnesses, different evidence, and different legal
theories and defenses, which could lead to confusion
of the jury. United States v. 1,071.08 Acres of
Land, Yuma & Mohave Counties, Arizona, 564 F.2d 1350
(9th Cir. 1977); Fed.R. Civ. Pro. 21; Fed.R. Civ.
P. 42(b). Moreover, the Court finds that there will
almost certainly [be] separate issues of fact with
respect to each Defendant. Fed.R. Civ. Pro. 20.
BMG Music, slip op. at 1. Another district court approved and
adopted the Report and Recommendation of a Magistrate Judge which
recommended that both plaintiffs and defendants be severed,
finding that "each case presents a unique set of facts and
circumstances." Interscope Records v. Does 1-25, Case No.
6:04-cv-197-Orl-22DAB (M.D. Fla. Apr. 27, 2004), slip op. at 2.
In the Magistrate Judge's Report, it was found that the claims
bore no logical relation to each other, and that
[t]he record is bereft of any allegation that the
twenty-five Defendants are jointly or severally
liable to the sixteen Plaintiffs other than that the
Defendants use the Fast Track peer-to-peer network.
. . . .
Plaintiffs fail to show how or which of the
Defendants have actually downloaded Plaintiffs'
copyrighted songs from another Defendant (which could
conceivably link such Defendants) as opposed to any
other users of the systems.
Interscope Records v. Does 1-25, Case No. 6:04-cv-197-Orl-22DAB
(M.D. Fla. Apr. 1, 2004), Report and Recommendation at 5-6.
Plaintiffs argue that these cases "required Plaintiffs to
allege that all of Plaintiffs' claims arose from the same
transaction or occurrence, rather than a logically related
series of transactions or occurrences, as Rule 20 explicitly
permits." Plaintiffs' Br. at 22 n. 11. The opinions, however,
show that the proper tests were applied, and that proper
cognizance was taken of judicial efficiency and fairness to the
parties. See also Bridgeport Music, Inc. v. 11C Music,
202 F.R.D. 229, 232 (M.D. Tenn. 2001) (ordering severance in case brought by music
recording companies against music publishers, recording labels
and other entities for copyright infringement based on "sampled"
music, and finding that "[e]ach song and the alleged sampling
contained therein represents a discrete occurrence," despite the
fact that some defendants may have been involved in the
production of more than one song). Accordingly, Doe No. 7's
motion for severance is granted. Plaintiffs shall file their
claims against Doe No. 7 in a separate action. Both plaintiffs
and defendants may, however, consider consolidating at least some
of the pre-trial discovery in the two cases. See Tele-Media
Co. of Western Connecticut v. Antidormi, 179 F.R.D. 75, 76 (D.
Conn. 1998) (following severance, "the advantages of a single
action must be achieved, to the extent they can be, through
consolidation or other means.").
Doe No. 7 has also requested that all other defendants be
severed as well, despite the fact that no other defendant has
made a similar motion. Because the number of Doe defendants in
this case is not unduly large, the failure to sever the remaining
claims would not "result in prejudice, expense or delay."
Wyndham Assocs. v. Bintliff, 398 F.2d 614, 618 (2d Cir. 1968).
Plaintiffs have also argued that the non-moving defendants may
wish to litigate the case as a cost-saving measure. Accordingly, the remaining claims will not be severed at the present time.
However, the Court will entertain motions for severance from the
For the reasons set forth above, Doe No. 7's motion to quash
the subpoena served on NYU is denied, as is Doe No. 7's request
for attorney's fees. The motion to dismiss for lack of personal
jurisdiction is denied as premature, but may be renewed later.
Doe No. 7's motion to sever the claims against Doe No. 7 from the
remainder of the action is granted, and plaintiffs shall file a
separate action against Doe No. 7. Pre-trial discovery in the two
actions may, however, be consolidated. Severance of the remaining
defendants is denied at this time.
It is so ordered.
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