Five-Factor Test Applied To Subpoenas Seeking File Sharer Identities

Internet service providers have to disclose the names of their subscribers who are accused of using a file-sharing site to copy a pornographic movie, a federal judge ruled in a copyright infringement suit. Raw Films Ltd. v. John Does 1-15, 11-7248. District Judge Mary A. McLaughlin of the Eastern District of Pennsylvania said that while Internet users have an expectation of privacy, that doesn't apply when they are allegedly infringing on another party's copyright.

Because the U.S. Court of Appeals for the Third Circuit hasn't come up with a standard for balancing the right to anonymous speech against the need for discovery, Judge McLaughlin adopted a five-point test followed by the Second Circuit. According to the Eastern District opinion, courts around the country have adopted a variety of standards to handle the issue. Judge McLaughlin said the Second Circuit was the only federal appellate court to have come up with a test to handle the issues. Given the prevalence of file sharing, Judge McLaughlin's opinion could have broad applicability.

“Courts analyzing the expectation of privacy possessed by Internet users engaging in online file-sharing have concluded that such expectation is at most minimal because those individuals have already voluntarily given up certain information by engaging in that behavior,” the district judge wrote in her 21-page opinion. “A Doe defendant who has allegedly used the Internet to unlawfully download and disseminate copyrighted material does not have a significant expectation of privacy.”

Downloading with BitTorrent

In Raw Films, the British adult film website contends that 15 John Does from the Philadelphia area, identified only by their Internet-protocol addresses, violated federal copyright law when they allegedly reproduced the pornographic movie Bareback Street Gang. Raw Films moved to compel the ISPs to give it the names associated with the addresses.

Raw Films alleged that the Doe defendants used BitTorrent protocols, described in the complaint as “the most common peer-to-peer file-sharing protocols,” to reproduce the movie. The system works by having an initial “seeder” that breaks the original file into equally sized pieces that are later reassembled into a whole when a user downloads the Torrent file.

BitTorrent, whose users account for more than a quarter of all Internet traffic, the complaint said, derives its popularity from “its ability to distribute a large file without creating a heavy load on the source computer and network.” The complaint describes the system this way: “To reduce the load on the source computer, rather than downloading a file from a single source computer (one computer directly to another), the BitTorrent protocol allows users to join a 'swarm' of host computers to download and upload from each other simultaneously (one computer connected to numerous computers).”

Each of the Does in the suit is alleged to have participated in a swarm distributing Bareback Street Gang. Eighteen similar suits have been filed in more than a dozen district courts over the last year.

The Five-Factors Test

The Second Circuit adopted the test “balancing intellectual property rights against First Amendment anonymity interests,” in its 2010 decision in Arista Records v. Doe 3, 604 F.3d 110 (2d Cir. 2010). According to Judge McLaughlin, the Second Circuit “derived” the five-factor test from a 2004 Southern District of New York opinion, Sony Music Entertainment Inc. v. Does 1-40, 326 F. Supp. 2d 556 (S.D.N.Y. 2004). The test arose from a copyright infringement case in which the court recognized the potential for a person's choice in uploading files to be protected but allowed that the U.S. Constitution affords limited protection to speech that infringes on copyrighted material.

According to Judge McLaughlin, the five factors to determine if the need to disclose outweighs the right to anonymity are:

• A prima facie claim of infringement;
• The specificity of the information sought from the ISP;
• A lack of alternative means of obtaining the information;
• A “central need” for the information in order to bring the claim; and
• The expectation of privacy held by the objecting party.

The Eastern District judge concluded “that such a test strikes the appropriate balance between the limited protection afforded to speech that constitutes copyright infringement and the need for the plaintiff to serve a defendant with process in order to advance non-frivolous claims of infringement.”

Weighing those factors, Judge McLaughlin found the Internet providers had to produce the names of their customers. A prima facie claim of infringement was easily met by Raw Films' assertion that it owns a copyright in Bareback Street Gang, a 2006 Czech-language movie, and that the Does connected to its “investigative server” and copied parts of the film. Second, because Raw Films sought the names, addresses, telephone numbers and e-mail addresses for the people associated with the IP addresses involved in file sharing, the requirement for specificity in identifying the Does was met, Judge McLaughlin found. Similarly, Raw Films successfully argued that the only way by which it could get the names of the Does was through the ISPs, which satisfied the third and fourth criteria.

Under the final factor, Judge McLaughlin found the expectation of privacy held by the Internet user to be was low. By engaging in peer-to-peer file sharing, users make their computers available to others worldwide.

After discussion of the test, Judge McLaughlin denied the Does' motion to quash the subpoena.

Internet service providers have to disclose the names of their subscribers who are accused of using a file-sharing site to copy a pornographic movie, a federal judge ruled in a copyright infringement suit. Raw Films Ltd. v. John Does 1-15, 11-7248. District Judge Mary A. McLaughlin of the Eastern District of Pennsylvania said that while Internet users have an expectation of privacy, that doesn't apply when they are allegedly infringing on another party's copyright.

Because the U.S. Court of Appeals for the Third Circuit hasn't come up with a standard for balancing the right to anonymous speech against the need for discovery, Judge McLaughlin adopted a five-point test followed by the Second Circuit. According to the Eastern District opinion, courts around the country have adopted a variety of standards to handle the issue. Judge McLaughlin said the Second Circuit was the only federal appellate court to have come up with a test to handle the issues. Given the prevalence of file sharing, Judge McLaughlin's opinion could have broad applicability.

“Courts analyzing the expectation of privacy possessed by Internet users engaging in online file-sharing have concluded that such expectation is at most minimal because those individuals have already voluntarily given up certain information by engaging in that behavior,” the district judge wrote in her 21-page opinion. “A Doe defendant who has allegedly used the Internet to unlawfully download and disseminate copyrighted material does not have a significant expectation of privacy.”

Downloading with BitTorrent

In Raw Films, the British adult film website contends that 15 John Does from the Philadelphia area, identified only by their Internet-protocol addresses, violated federal copyright law when they allegedly reproduced the pornographic movie Bareback Street Gang. Raw Films moved to compel the ISPs to give it the names associated with the addresses.

Raw Films alleged that the Doe defendants used BitTorrent protocols, described in the complaint as “the most common peer-to-peer file-sharing protocols,” to reproduce the movie. The system works by having an initial “seeder” that breaks the original file into equally sized pieces that are later reassembled into a whole when a user downloads the Torrent file.

BitTorrent, whose users account for more than a quarter of all Internet traffic, the complaint said, derives its popularity from “its ability to distribute a large file without creating a heavy load on the source computer and network.” The complaint describes the system this way: “To reduce the load on the source computer, rather than downloading a file from a single source computer (one computer directly to another), the BitTorrent protocol allows users to join a 'swarm' of host computers to download and upload from each other simultaneously (one computer connected to numerous computers).”

Each of the Does in the suit is alleged to have participated in a swarm distributing Bareback Street Gang. Eighteen similar suits have been filed in more than a dozen district courts over the last year.

The Five-Factors Test

The Second Circuit adopted the test “balancing intellectual property rights against First Amendment anonymity interests,” in its 2010 decision in Arista Records v. Doe 3 , 604 F.3d 110 (2d Cir. 2010). According to Judge McLaughlin, the Second Circuit “derived” the five-factor test from a 2004 Southern District of New York opinion, Sony Music Entertainment Inc. v. Does 1-40 , 326 F. Supp. 2d 556 (S.D.N.Y. 2004). The test arose from a copyright infringement case in which the court recognized the potential for a person's choice in uploading files to be protected but allowed that the U.S. Constitution affords limited protection to speech that infringes on copyrighted material.

According to Judge McLaughlin, the five factors to determine if the need to disclose outweighs the right to anonymity are:

• A prima facie claim of infringement;
• The specificity of the information sought from the ISP;
• A lack of alternative means of obtaining the information;
• A “central need” for the information in order to bring the claim; and
• The expectation of privacy held by the objecting party.

The Eastern District judge concluded “that such a test strikes the appropriate balance between the limited protection afforded to speech that constitutes copyright infringement and the need for the plaintiff to serve a defendant with process in order to advance non-frivolous claims of infringement.”

Weighing those factors, Judge McLaughlin found the Internet providers had to produce the names of their customers. A prima facie claim of infringement was easily met by Raw Films' assertion that it owns a copyright in Bareback Street Gang, a 2006 Czech-language movie, and that the Does connected to its “investigative server” and copied parts of the film. Second, because Raw Films sought the names, addresses, telephone numbers and e-mail addresses for the people associated with the IP addresses involved in file sharing, the requirement for specificity in identifying the Does was met, Judge McLaughlin found. Similarly, Raw Films successfully argued that the only way by which it could get the names of the Does was through the ISPs, which satisfied the third and fourth criteria.

Under the final factor, Judge McLaughlin found the expectation of privacy held by the Internet user to be was low. By engaging in peer-to-peer file sharing, users make their computers available to others worldwide.

After discussion of the test, Judge McLaughlin denied the Does' motion to quash the subpoena.