WEST COAST PRODUCTIONS, INC 4:12-cv-00748-FRB

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF MISSOURI

WEST COAST PRODUCTIONS, INC. ) ) Plaintiff, ) ) v. ) Case No. 4:12-cv-00748 ) SWARM SHARING HASH FILES 25600BE3C6CC4529AC4247FA9B6BCB8B530857EB, 8653511547D205181DB2B69D2C3B4F732947F3E4, CCDA1BA63666D12E05A652B91008180724F13AB1, D895A3C7A530DDD3C8CD7E0F7DEF6B43211F4E35, EB72BDD147682AF1141C1574A78DD848D01C0CDDC; AND DOES 1-442. Defendants.

))))))))))

MEMORANDUM IN SUPPORT OF NOTICE OF OBJECTIONS AND MOTION TO MODIFY

MEMORANDUM AND AMENDED PROTECTIVE ORDER

Non-party Internet service providers AT&T Internet Services (“AT&T”) and Cequel

Communications, LLC d/b/a Suddenlink Communications (“Suddenlink” and, together with

AT&T, the “Moving ISPs”) hereby file this Memorandum in Support of Notice of Objections

and Motion to Modify Memorandum and Amended Protective Order in order to notify the Court

of objections timely served by them prior to the entry of the Memorandum and Amended

Protective Order (the “Amended Order,” ECF No. 37), and request modification of that order for

the reasons set forth herein.

Case: 4:12-cv-00748-FRB Doc. #: 48 Filed: 11/21/12 Page: 1 of 11 PageID #: 267

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I. In seeking to invoke the Court’s authority in connection with subpoenas issued to the Moving ISPs, Plaintiff failed to advise the Court that the Moving ISPs had timely objected to the subpoenas pursuant to Rule 45 of the Federal Rules of Civil Procedure.

On the same day that Plaintiff filed this lawsuit, it sought ex parte relief permitting the

issuance of subpoenas to non-party Internet service providers (“ISPs”) on an expedited basis.

(Pl.’s Ex Parte Mot. for Leave to Take Disc. Prior to Rule 26(f) Conference, ECF No. 2.)1 The

Court granted the expedited discovery motion by order of June 18, 2012. (Order Permitting

Limited Disc. and Protective Order, ECF No. 12.)

Thereafter, Plaintiff issued a subpoena to AT&T (the “Subpoena to AT&T,” a true and

correct copy of which is attached as Exhibit A hereto), and Plaintiff issued a subpoena to

Suddenlink (the “Subpoena to Suddenlink,” a true and correct copy of which is attached as

Exhibit B hereto), both of which seek the personally identifiable information of a number of the

Moving ISPs’ respective Internet subscribers. Because AT&T and Suddenlink are not parties to

this litigation, the subpoenas were issued and served on them pursuant to Rule 45 of the Federal

Rules of Civil Procedure. Plaintiff issued the Subpoena to AT&T from the United States District

Court for the Northern District of Texas, and Plaintiff issued the Subpoena to Suddenlink from

the United States District Court for the Eastern District Court of Missouri.

In response to the subpoenas, AT&T and Suddenlink timely served objections to the

subpoenas, as permitted by Rule 45(c)(2)(B). True and correct copies of the Moving ISPs’

objections are attached hereto as Exhibits C and D. Among other things, the Moving ISPs

1 Plaintiff alleges acts of infringement committed by hundreds of defendants over a period of five calendar months in different states ranging from Massachusetts to California. (Compl. at 1, ECF No. 1 (action brought as to six (6) different “hash” files and 442 different Doe defendants) & Ex. A thereto, ECF No. 1-1 (listing alleged acts of infringement spanning from November 27, 2011 through April 23, 2012).) This case presents one of the more aggressive approaches implemented by plaintiffs in BitTorrent copyright litigation – i.e., multiple swarms, a lengthy infringement period, and numerous Doe defendants in many states.


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objected to the burdens and impropriety associated with providing information related to Internet

account owners as to whom Plaintiff has not established that joinder is appropriate and that

jurisdiction and venue are proper.2 (See Ex. C at pp. 2-3; and Ex. D at pp. 3-4.) These grounds

have been upheld in a growing majority of cases, including other, virtually identical cases filed

by this same Plaintiff. See West Coast Prods., Inc. v. Swarm Sharing Hash Files, No. 12-cv-

0670, 2012 U.S. Dist. LEXIS 123170 at *7 (W.D. La. Aug. 17, 2012) (sua sponte ruling “that

defendants’ use of the same ISP and P2P networks to allegedly commit copyright infringement

is, without more, insufficient for permissive joinder under Rule 20.”); see also West Coast

Prods., Inc. v. Swarm Sharing Hash Files, No. 12-cv-1713, 2012 WL 3560809 at *2-4 (W.D. La.

Aug. 17, 2012) (granting motion to sever filed by a Doe defendant and severing all but one Doe

defendant from the case; noting that if actions against each Doe defendant had been filed

separately, the plaintiff would have been required to pay more than $600,000 in filing fees; and

ordering plaintiff to elect which Doe defendants it wished to proceed against, file separate

actions, and pay filing fees for each such action); see also Order, West Coast Prods., Inc. v. Does

2 Although the Moving ISPs do not seek here to have the Court rule on their objections, it is notable that federal courts are increasingly resistant to subpoenas such as those at issue here, where significant issues related to the propriety of jurisdiction and joinder are presented. Nu Image, Inc. v. Does 1-23,322, 799 F.Supp. 2d 34, 41 (D.D.C. 2011) (expedited discovery inappropriate absent showing of a good faith basis to believe defendants are within jurisdiction of district court); Hard Drive Prods., Inc. v. Does 1-90, No. C11-03825, 2012 WL 1094653 (N.D. Cal. March 30, 2012) (court cannot exercise “personal jurisdiction over the defendants absent a showing of minimum contacts for each Doe defendant”); Millennium TGA, Inc. v. Comcast Cable Commc’n, LLC, No. 12-mc-00150, 2012 WL 2371426 at *3, *5, *7-8 (D.D.C. Jun. 25, 2012) (“it is very important that these [Doe defendants] are not subject to litigating in an arbitrarily-selected forum that is hundreds, or even thousands, of miles away from their residences.”); see also Cinetel Films, Inc. v. Does 1-1,052, 853 F.Supp. 2d 545, 551-53 (D.Md. 2012) (“If the defendants are improperly joined, making the case procedurally defective, plaintiffs should have to cure that defect before the case proceeds. Otherwise, plaintiffs receive a windfall, misjoining defendants and securing all the necessary personal information for settlement without paying more than a one-time filing fee.”); In re BitTorrent Adult Film Copyright Infringement Cases, Nos. 11-cv-3995, 12-cv-1147, 12-cv-1150, 12-cv-1154, 2012 WL 1570765 at *11 (E.D.N.Y. May 1, 2012) (“the dates of downloading provided in the complaints—which are often weeks or months apart—further undermine the allegation that all of the John Does were part of a single swarm. Thus, even assuming that the John Does are the actual infringers, the assertion that defendants were acting in concert rests upon a thin reed.”); K-Beech, Inc. v. John Does 1-41, No. 11-cv-00046, 2012 WL 773683 at *3-6 (S.D. Tex. March 8, 2012) (finding that plaintiff failed to establish that joinder was appropriate under Rules 20 and 21 where “the activity alleged involves 24 defendants, 7 different ISPs, and roughly 3 months of activity”).


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1-1,911, No. 11-cv-1687 (D.D.C. Oct. 25, 2011), ECF No. 7 (stating that a request for expedited

discovery would be entertained “only for IP addresses that plaintiff has a good faith basis to

believe are reasonably likely to correspond to internet account owners located in the District of

Columbia.”). In any event, Plaintiff’s counsel did not contact AT&T’s counsel or Suddenlink’s

counsel to confer regarding their objections, nor did Plaintiff’s counsel file motions to compel.3

Thereafter, this Court entered an order staying Plaintiff’s expedited discovery efforts

because “one or more of the Rule 45 subpoenas issued by plaintiff to the third party ISPs

contained an inaccurate case number,” and the Court was concerned that subscribers’ efforts to

resist the subpoenas might be misdirected as a result of such inaccurate case numbers. (Order of

Oct. 1, 2012, ECF No. 31.) Plaintiff subsequently sought relief from that stay, claiming to have

cured the underlying defect. (Pl. West Coast Prods., Inc.’s Resp. to Court Order of Stay

(“Motion to Lift Stay”), ECF No. 34.)

However, in seeking relief from the stay, Plaintiff told the Court only that it had

contacted each of the subpoenaed ISPs, and Plaintiff did not advise the Court of the material fact

that the Moving ISPs had served Rule 45 objections to Plaintiff’s subpoenas. (Id. at 1.) Although

Plaintiff had full knowledge of the objecting ISPs and their attorneys, Plaintiff asked the Court,

without even notifying those ISPs’ attorneys, to impose revised deadlines with respect to “all

Doe defendants, regardless of their ISP provider (sic).” (Mot. to Lift Stay, at 2 (emphasis

added); see also [Proposed] Order Lifting Stay and Amended Order Permitting Limited Disc.

3 Any motion to compel with respect to the Subpoena to AT&T (or for that matter, any motion to quash) would have to be filed in the issuing court for that subpoena – i.e., the United States District Court for the Northern District of Texas. Fed. R. Civ. P. 45(c)(2)(B)(i), (c)(3). Because the issuing court for the Subpoena to Suddenlink is this Court – the United States District Court for the Eastern District of Missouri – any motion to compel or motion to quash with respect to that subpoena would have to be filed in this Court. Id.


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and Protective Order (“Proposed Order”), ECF No. 34-1 (proposing the imposition of obligations

and deadlines on AT&T and Suddenlink with respect to subpoenas).)

Because the Moving ISPs timely served objections to Plaintiff’s subpoenas, Rule 45

provides that neither of the Moving ISPs has any obligation to take further action with respect to

the subpoenas until and unless Plaintiff: (i) attempts to confer regarding the objections, (ii) files a

motion to compel in the court of issuance of a given subpoena, (iii) provides AT&T and/or

Suddenlink, as applicable, with notice and an opportunity to be heard with respect to such

motion(s) to compel, and (iv) obtains an order compelling production. See Fed. R. Civ. P.

45(c)(2)(B); Central States, Southeast and Southwest Areas Pension Fund v. King Dodge, Inc.,

2011 WL 2784118, *2 (E.D. Mo. July 15, 2011). Plaintiff has not undertaken to do any of the

above. Instead, Plaintiff – again, without advising the Court of the Moving ISPs’ objections –

has sought and obtained ex parte relief against the Moving ISPs in violation of the Rule 45

protections intended to protect non-parties from undue costs and burdens.

II. Plaintiff may only request relief from third-party ISPs in the form of permission to issue subpoenas under Rule 45 of the Federal Rules of Civil Procedure, and that Rule neither contemplates nor permits the issuance of a mandatory injunction to a third party.

Even if the Moving ISPs had not objected to the subpoenas, the Amended Order, issued

at Plaintiff’s urging, imposes obligations and requirements on the Moving ISPs beyond those

contemplated in connection with non-party discovery under the Federal Rules of Civil

Procedure. In particular, the Amended Order includes a requirement that the Moving ISPs must

“serve the remaining Doe Defendants with a copy of this Order”4 and various related

4 With reference to the numerous references to “Doe Defendants” in the Amended Order, it has been widely recognized that the Internet subscribers who might be identified by the ISPs (and to whom any notice could be given) are not necessarily the Doe Defendants, because they may or may not have been the actual users of the Internet account in connection with the allegedly infringing activity. See, e.g., In re BitTorrent Adult Film Copyright Infringement Cases, 2012 WL 1570765 at *3 (stating: “it is no more likely that the subscriber to an IP

Footnote continues on next page.


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requirements and associated timelines imposed on the ISPs concerning notifications, disclosures,

and preservation. (Am. Order at 4-6.)

The Moving ISPs do not agree that Plaintiff is entitled to an order that the ISPs should be

required to send any particular communications to their customers by any particular dates.5

Furthermore, the Moving ISPs do not agree that Plaintiff is entitled to an order that the ISPs

should be required to monitor and take additional actions concerning subscribers and subscriber

data as this litigation progresses.

The Moving ISPs are not parties to this lawsuit and are not aware of any authority for

such relief to be ordered against them in the absence of notice, an opportunity to be heard, and

satisfaction of all other applicable requirements by the Plaintiff. Such relief is in the nature of a

preliminary injunction, which would be governed by Rule 65 of the Federal Rules of Civil

Procedure – inappropriate here because the requirements and protections of that Rule have not

and cannot be met by the Plaintiff as to the non-party ISPs.6

address carried out a particular computer function – here the purported illegal downloading of a single pornographic film – than to say an individual who pays the telephone bill made a specific telephone call.” and “Different family members, or even visitors, could have performed the alleged downloads.”); Millennium TGA, Inc., 2012 WL 2371426 at *6 (quoting In re BitTorrent Adult Film Cases for the proposition that “the alleged infringer could be the subscriber, a member of his or her family, an employee, invitee, neighbor or interloper.”; and noting that, in another case, a plaintiff’s counsel had conceded that “a substantial percentage of the Internet subscribers linked to the IP addresses used in BitTorrent downloading are not actually liable for copyright infringement.”); see also AF Holdings. LLC v. John Doe, No. 12-cv-5709, 2012 U.S. Dist. LEXIS 151730 (C.D. Cal. Oct. 19, 2012) (noting “an IP address alone may yield subscriber information, but, that may only lead to the person paying for the internet service and not necessarily the actual infringer, who may be a family member, roommate, employee, customer, guest, or even a complete stranger.”). 5 The Moving ISPs do typically notify their subscribers and give them an opportunity to object to the disclosure of their personally identifiable information, and the Moving ISPs typically object to subpoenas to the extent they do not have a reasonable period of time to do so. Suddenlink and other ISPs may be obligated to send certain notices, to the extent they qualify as a “cable provider” under the Cable Privacy Act, 47 U.S.C. § 551. However, as further addressed herein, the Moving ISPs are not aware of any legal authority for the entry of a court order requiring them to send communications to their subscribers in connection with a lawsuit to which they are not a party. 6 Under Rule 65, such an injunction may only issue against: the parties; the parties officers, agents, servants, employees, and attorneys; and other persons who are in active concert or participation with any of the parties, the parties officers, agents, servants, employees, and attorneys. Fed. R. Civ. P. 65(d)(2). Thus, the ISPs are not persons as to whom an injunction may appropriately issue under Rule 65. In addition, no security to pay the “costs and

Footnote continues on next page.


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As is typical in similar cases, Plaintiff in this case has sought expedited discovery by

alleging that it can demonstrate “good cause” for such discovery under Rule 26 of the Federal

Rules of Civil Procedure. (Pl.’s Mem. in Supp. of Its Ex Parte Mot. for Leave to Take Disc.

Prior to Rule 26(f) Conference at 2, ECF No. 4.) If granted, such a request could permit Plaintiff

to issue subpoenas to third parties pursuant to Rule 45.

Rule 45 of the Federal Rules of Civil Procedure sets forth the appropriate mechanisms by

which discovery may be sought from a nonparty via a federal court’s subpoena power. Included

within Rule 45 are a number of procedural protections, such as an obligation on the part of a

party seeking such discovery to avoid the imposition of an undue burden, the opportunity to

object, and the protection against the imposition of “significant” costs upon a nonparty. Fed. R.

Civ. P. 45(c)(1), c(2)(B)(ii).7 Such procedural protections arise from a recognition that non-

litigants should not be significantly burdened in connection with litigation in which they have no

interest. See, e.g., DigiProtect USA Corp. v. Does 1-240, 2011 WL 4444666 at *4 (S.D.N.Y.

Sep. 26, 2011) (“Courts are especially sensitive to the burdens placed on nonparties”); Compaq

Computer Corp. v. Packard Electronics, Inc., 163 F.R.D. 329, 335-36 (N.D. Cal. 1995) (“if the

sought-after [discovery is] not relevant nor calculated to lead to the discovery of admissible

evidence, then any burden whatsoever imposed upon [a third party] would be by definition

‘undue’”) (emphasis in original). The relief included in the Amended Order, however, exceeds

permission to issue expedited Rule 45 subpoenas to non-parties.

damages sustained by any party found to have been wrongfully enjoined or restrained” has been required of Plaintiff, and therefore no preliminary injunction may properly issue, even if the ISPs could theoretically be properly subject to such an order. Fed. R. Civ. P. 65(c). 7 Rule 45 also provides detailed procedures whereby the subpoenaed person and any other affected persons may assert their rights and any objections. Fed. R. Civ. P. 45 (c)(2)(B), (c)(3).


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The Moving ISPs fully understand and agree with the desire of this Court and other

courts to implement protective measures concerning the Internet subscribers who may be

identified through plaintiffs’ expedited, ex parte discovery requests served on non-parties.8

However, the Moving ISPs contend that such additional measures and the associated obligations

should be undertaken and assumed by attorneys ad litem who are able to advise subscribers of

their legal rights with respect to the subpoenas and who would be the proper parties to represent

their interests before the court. See, e.g., Mick Haig Prods., e.K. v. Does 1-670, 687 F.3d 649,

650 (5th Cir. 2012) (discussing actions taken by Doe defendants through court-appointed ad

litem); Order at 1, Combat Zone Corp. v. John/Jane Does 1-13, No. 12-cv-3927 (N.D. Tex. Oct.

15, 2012), ECF No. 7 (noting that “because the Defendants’ identities have yet to be ascertained,

they cannot represent their interests before this Court.” and appointing an ad litem to represent

such interests). In addition, or alternatively, other protective relief might be ordered by the

Court, such as an order providing that the Internet subscribers may appear anonymously until

after they have had the opportunity to file and obtain a ruling on a Rule 12 motion to dismiss.

Indeed, the Amended Order contemplates such measures, in that it already suggests that a Doe

defendant may seek leave to oppose Plaintiff’s subpoenas on an anonymous basis. (Am. Order

at 4.)

However, the Amended Order requires the ISPs to monitor this litigation and take various

actions on a specific timeline with respect to their customers and associated data, well beyond

8 As observed by the courts, the plaintiffs’ tactics in these cases are questionable at best and appear to be driven by a collection-driven business model rather than any sincere desire to litigate. See, e.g., AF Holdings. LLC v. John Doe, No. 12-cv-5709, 2012 U.S. Dist. LEXIS 151730 (C.D. Cal. Oct. 19, 2012) (“given the subject matter of [the plaintiff’s] accusations and the economics of defending such a lawsuit, it is highly likely that the subscriber would immediately pay a settlement demand—regardless of whether the subscriber is the actual infringer.”). The potential for unfair tactics is accentuated where, as here, many or most of the Internet subscribers are not even located in the forum state.


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the mere production of documents or information subject to the protections and requirements of

Rule 45. Such provisions would impose an undue burden on the ISPs. See United States v.

Columbia Broadcasting Sys. Inc., 666 F.2d 364, 371-72 (9th Cir. 1981) (“nonparty witnesses are

powerless to control the scope of litigation and discovery, and should not be forced to subsidize

an unreasonable share of the costs of a litigation to which they are not a party”), cert. denied, 457

U.S. 1118. Moreover, the Moving ISPs are not aware of any authority that permits the issuance

of injunctive-type relief against an entity which is not party to the litigation.9

CONCLUSION

As set forth above, Plaintiff has not taken the prescribed actions with respect to any

attempt to enforce its subpoenas against the Moving ISPs on account of their objections. Thus,

the Subpoena to AT&T and the Subpoena to Suddenlink were not properly before the Court

when Plaintiff filed its Motion to Lift Stay and submitted its Proposed Order. For this reason

alone, the Amended Order should be modified to exclude any relief pertaining to the Subpoena

to AT&T or the Subpoena to Suddenlink.

Moreover, the Moving ISPs respectfully request that the Court modify the Amended

Order to remove any requirements that the ISPs take particular actions with respect to their

subscribers or otherwise become involved in the ongoing progress of this litigation.10 If Plaintiff

is permitted to issue subpoenas to ISPs on an expedited basis, the issuance of such subpoenas,

and the ISPs’ and other affected persons’ rights to object and seek recovery of costs, should be as

9 Under the Federal Rules of Civil Procedure, a preliminary injunction may only bind: the parties; the parties' officers, agents, servants, employees, and attorneys; and other persons who are in active concert or participation with any of the parties, or the parties' officers, agents, servants, employees, and attorneys. See Fed. R. Civ. P. 65(d)(2). Here, the Moving ISPs are not alleged to be in "active concert or participation" with the Doe defendants. 10 The aggregate impact of such orders in this and similar cases, when granted, is particularly burdensome on ISPs, given that hundreds of different cases are involved and the extraneous provisions add a confusing layer of potential requirements that are inconsistent, vary from court to court and plaintiff to plaintiff, and may even be impossible to follow after taking into account the competing demands of other civil litigants and law enforcement.


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set forth in Rule 45. The Moving ISPs also respectfully submit that the Court consider the

appointment of an attorney ad litem and/or additional protective measures (not involving burdens

on the non-party ISPs) to protect the interests of the hundreds of Internet subscribers, located

across the country, who may or may not have been the user of their Internet account at any

particular time.

Respectfully submitted:

By: /s/ Troy A. Bozarth Troy A. Bozarth

E.D. MO. Reg. No. 5209515 HEPLERBROOM LLC One Metropolitan Square 211 North Broadway, Suite 2700 St. Louis, MO 63102 Tel: (314) 241-6160 Fax: (314) 241-6116 E-Mail: [email protected]

Bart W. Huffman (motion for admission pro hac vice forthcoming)

Locke Lord LLP 100 Congress Ave., Ste. 300 Austin, TX 78701 Tel: (512) 305-4746 Fax: (512) 391-4741 E-Mail: [email protected] Attorneys for AT&T Internet Services

By: /s/ Andrew G. Toennies w/ consent Andrew G. Toennies E.D. MO. Reg. No. 160356 LASHLY & BAER, P.C. 714 Locust Street St. Louis, Missouri 63101-1699 Tel: (314) 621-2939 E-Mail: [email protected]

Attorneys for Cequel Communications,

LLC d/b/a Suddenlink Communications


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Certificate of Service

I hereby certify that on November 21, 2012, I electronically transmitted the attached

document to the Clerks’ Office using the CM/ECF system for filing and transmittal of a Notice

of Electronic Filing to the following CM/ECF registrants:

Paul A. Lesko SIMMONS AND BROWDER, LLC One Court Street Alton, IL 62002 618-259-2222 Email: [email protected] ATTORNEY TO BE NOTICED Matthew A. Radefeld FRANK, JUENGEL & RADEFELD 7710 Carondelet Ave. Suite 350 Clayton, MO 63105 314-725-7777 Fax: 314-721-4377 Email: [email protected] LEAD ATTORNEY ATTORNEY TO BE NOTICED Ken J. Ryno UAW LEGAL SERVICES PLAN 1000 Lake St. Louis Blvd. Suite 710 Lake St. Louis, MO 63367 636-561-2057 Fax: 636-561-2095 Email: [email protected] LEAD ATTORNEY ATTORNEY TO BE NOTICED

/s/ Troy A. Bozarth Troy A. Bozarth


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