How a Switch in Time Saved 23,322 John Does (Their Identities, for Now, at Least)

In a series of posts a couple of weeks ago, I discussed an important decision out of the West Coast case* regarding anonymous internet speech.  In that decision, U.S. Judge Kollar-Kotelly refused to stop (“quash”) subpoenas that had been issued to ISPs for purpose of identifying 5829 anonymous defendants, who were accused of downloading the plaintiff’s movie using BitTorrent.  I mentioned in those posts that this was one of several such BitTorrent-movie cases pending in the District of Columbia.  A few of those other cases belong to Judge Wilkins, and Judge Wilkins has just done a remarkable thing in a case involving The Expendables:  on his own volition, he has refused to let such subpoenas even issue.

 *  I think I sometimes accidentally called this the “Blue Coast” case.  Blue Coast is a better name than West Coast, but I should nevertheless try to get it right.  Something I didn’t realize about West Coast when I wrote those posts is that, unlike most of the other cases, the movie at issue is pornographic.  Perhaps that’s why the anonymous defendants were so motivated to protect their identities!  Somehow that fact didn’t make it into Judge Kollar-Kotelly’s order–seems sort of relevant.

Go back to the steps you have to take to discover the identity of an anonymous defendant:  (1) file a “John Doe” complaint; (2) ask the court for permission to “expedited discovery” so you can discover the defendants’ identities and properly name them; (3) issue subpoenas to the ISPs seeking the identities of the customer who was using the IP address at that time; and (4) amend your complaint, naming the defendants whose identities you found out and possibly dropping those who you learned were not subject to the court’s jurisdiction.

Recall also the catch-22 the plaintiff and the court is in.  Courts don’t have “personal jurisdiction” over everyone for everything.  If you don’t know a defendant’s identity, you can’t know if you’ve haled the defendant into the right court.  But if you’re not in the right court, the defendant shouldn’t have been haled in there in the first place.  Judge Kollar-Kotelly took the view that it’s OK to hale a defendant into an inappropriate court, so long as the defendant has the opportunity to object at the appropriate time.  Since the defendant can’t really object until she’s been identified, that resolved the paradox.

Judge Wilkins doesn’t agree.  (More accurately, he no longer agrees–see below.)  When the plaintiff in Nu Image, Inc. v. Does 1-23,322* asked for permission to take “expedited discovery” (step 2 in the process outlined above), the judge said no.  Usually,  these motions are granted because there’s no one to object at this early stage–the defendants don’t know they’ve been sued yet.  But the judge decided to oppose the motion himself (in a sense) through a “show cause” order, in which he asked the plaintiff to explain to him why it’s proper to hale all of these defendants into his court.

*  Not a typo.  Twenty three thousand three hundred and twenty-two defendants.

In denying the request for expedited discovery, Judge Wilkins’ starting point was the uncontroversial point that the plaintiff needed to show “good cause” for the discovery.  His twist was that good cause included a showing that there was at least a reasonable chance that the defendants were being properly haled into his court.  What are the odds that any one of the 23,322 defendants actually resides in Washington D.C.?  Not very high

The judge didn’t throw the case out entirely.  He didn’t require absolute proof of residency, only a “good faith belief” of residency.  That’s not very high.  In fact, it’s low enough that the judge will accept IP-address geolocation services as a reasonable proxy, fully aware of their limitations.  He’s just looking for some way to cut down substantially on the number of false-positives, i.e., from about 23,000 false positives to maybe 1,000.

It must be emphasized that Judge Wilkins was not concerned about anonymity per se.  I doubt he disagrees with Judge Kollar-Kotelly’s main point that there is only a negligible free-speech right in downloading copyrighted materials anonymously.  Rather, the judge seemed a trifle offended that his court was being used a clearinghouse for identifying tens of thousands of defendants and, by extension, identifying the proper courts for those defendants:

The Court understands why, for the sake of convenience and expense, the Plaintiff would desire to use this single lawsuit as a vehicle to identify all of the 23,322 alleged infringers. Furthermore, the Court understands and is sympathetic to the need to combat copyright infringement. However, it is not appropriate, and there is not good cause, to take third-party discovery in this case solely to obtain information that will be used in another lawsuit in a different venue. As the Supreme Court has stated, “[i]n deciding whether a request comes within the discovery rules, a court is not required to blind itself to the purpose for which a party seeks information. Thus, when the purpose of a discovery request is to gather information for use in proceedings other than the pending suit, discovery properly is denied.”  [Citations omitted.]

In addition, the Court must take into account the delay and unproductive utilization of court resources in prosecuting this lawsuit if the Plaintiff is allowed to seek discovery with respect to all 23,322 putative defendants, only to result in the eventual dismissal of the vast majority of those John Does later when it is revealed that they are not District of Columbia residents. The Court would need to govern litigation over motions to quash third-party subpoenas and motions to dismiss relating to hundreds or thousands of putative defendants who cannot be tried in this Court (if they make a motion).

In response to the argument that jurisdiction is a defense that must be asserted (which Judge Kollar-Kotelly found persuasive), Judge Wilkins said that the argument defies common sense.  Most of the improperly named defendants would raise the defense, and there’s no point waiting around to find out.

The strangest thing about this decision–the thing that must have really stunned the plaintiff’s lawyers–is that these lawyers had previously been before Judge Wilkins in nearly identical case, and Judge Wilkins had to this point always granted their request for expedited discovery.  What changed the judge’s mind?

According to Judge Wilkins, he changed his mind when he figured out what the correct venue statute should be.  It’s well known that 28 U.S.C. § 1400(a) governs copyright actions.  Since copyright actions also invoke federal-question jurisdiction, you’d think that 28 U.S.C. § 1391(b) would also apply.  Section 1391(b) provides that federal-question actions* “may, except as provided by law, be brought only in” certain districts.  Section 1400(a) provides that copyright actions “may be brought” in certain districts.  By a plain reading of the two statutes, you would think that § 1400(a) expands on the venue options provided by § 1391(b).

Technically, any federal case not based on diversity jurisdiction, but that’s 95% federal-question cases.

Judge Wilkins used to think so, but he’s changed his mind.  He now thinks that, for copyright actions, § 1400(a) is the exclusive venue statute.  Section 1391(b) doesn’t apply.  In his Show Cause Order, he makes a pretty persuasive case.  To me, the most persuasive argument is that the Supreme Court has held that § 1400(b) is the exclusive venue statute for patent actions.  If you swap “copyright” for “patent,” § 1400(a) is no different from § 1400(b).

This makes a big difference because § 1400(a) limits venue to only those districts “in which the defendant or his agent resides or may be found.”  By contrast, § 1391(b) allows actions to be brought in any district “in which any defendant may be found, if there is no district in which that action may otherwise be brought.”  In other words, if a single one of the thousands of anonymous defendants lives in Washington D.C., venue is proper.  Under § 1400, however, any defendant who is not a resident of Washington D.C. must be dismissed.*

*  Does Judge Wilkins go back and revoke his previous orders granting expedited discovery?

Thanks for reading!

Rick Sanders

Rick is an intellectual-property litigator. He handles lawsuits, arbitrations, emergency injunctions and temporary restraining orders, opposition and cancellation proceedings, uniform dispute resolution proceedings (UDRPs), pre-litigation counseling, litigation avoidance, and other disputes, relating to copyrights, trademarks, trade secrets, domain names, technology and intellectual-property licenses, and various privacy rights. He has taught Copyright Law at Vanderbilt University Law School. He co-founded Aaron | Sanders with Tara Aaron-Stelluto in 2011.