Joinder Issues In BitTorrent Copyright Litigation

BitTorrent Generally

BitTorrent software allows users to join together in a peer-to-peer network to make available and download large files, which may involve the sharing of copyrighted works. Within a modern BitTorrent network, the download process is unique from that of earlier generation peer-to-peer systems like Napster and Grokster. Rather than downloading a file from a single source, users of a BitTorrent network click on a .torrent file link, and, at that point, the downloading of a media work begins simultaneously from various sources around the Web. BitTorrent technology involves a multistep process:

• A user must first install a client application to facilitate the transfer of the file to the user's computer.
• Then, the user visits a BitTorrent indexing site, which collects and indexes .torrent files that point to popular copyrighted media or software files that have been uploaded by another user (the “seed file”). The .torrent files on the site do not contain the actual movie, music or software files; instead, the files contain the data used by the BitTorrent client to retrieve the content through a peer-to-peer transfer, including “hash” values that are used to identify the various pieces of the content file and the location of those pieces in the network.
• Once the user selects a file to download, “trackers” manage the download process and update the list of online “peers” that are presenting all or part of the requested file, that is, members of the “swarm.” In terms of speed, the larger the swarm, the faster the download.
• The BitTorrent client application then simultaneously downloads pieces of the content file from as many users as are available in the swarm at the time of the request, and then reassembles the content file on the user's computer when the download is complete. Once a user downloads a given file, he or she often becomes part of the “swarm” and a source for future downloads.

See generally, Diabolic Video Prods., Inc. v. Does 1'2099, 2011 WL 3100404, at 2 (N.D. Cal. May 31, 2011).

For investigators searching for instances of infringement, each swarm member can be identified by a unique alphanumeric “hashtag” number that accompanies every piece of the seed file. The investigators use this hashtag number to identify all the accused infringers that downloaded the copyrighted work with the same hashtag ' that is, members of the same swarm that downloaded the content. Using geolocation technology that examines the IP addresses of the swarm members, the copyright owner can then match each John Doe within the geographic jurisdiction of a certain district court. After bringing suit against these multiple John Does, the copyright owner typically requests early discovery and leave from the court to subpoena the defendants' ISPs to identify each John Doe.

Permissive Joinder Issues

Pursuant to Fed. Rule of Civ. P. 20(a)(2), permissive joinder of defendants is proper if: “(A) any right to relief is asserted against them jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences; and (B) any question of law or fact common to all defendants will arise in the action.” The theory behind joinder of BitTorrent swarm members is that each defendant is one of many users simultaneously uploading and downloading a protected work in a series of transactions involving common questions of law and fact. See, Raw Films, Inc. v. Does 1-32, 2011 WL 6840590 at 1 (N.D. Ga. Dec. 29, 2011).

Courts across the country are split on whether joinder of BitTorrent “swarm” participants is appropriate. Some courts have held that joinder is appropriate. See, Digital Sin, Inc. v. Does 1'176, 279 F.R.D. 239 (S.D.N.Y. 2012) (“it is difficult to see how the sharing and downloading activity [of individuals using the BitTorrent protocol in the same swarm] could not constitute a 'series of transactions or occurrences' for purposes of Rule 20(a).”); MGCIP v. Does 1'316, 2011 WL 2292958, at 2 (N.D. Ill. June 9, 2011) (“[G]iven the decentralized nature of BitTorrent's file-sharing protocol ' where individual users distribute the same work's data directly to one another without going through a central server ' the Court finds that sufficient facts have been plead to support the joinder of the putative defendants at this time.”).

However, a growing number of lower courts have held that swarm joinder is inappropriate. See, e.g., Malibu Media, LLC v. Does 1-23, 878 F.Supp.2d 628, 632 (E.D. Va. May 30, 2012) (“a plaintiff must allege facts that permit the court at least to infer some actual, concerted exchange of data between those defendants”; bare fact that a Doe defendant clicked on a command to participate in the BitTorrent Protocol does not mean that he was part of the downloading by unknown thousands of individuals across the country”); Lightspeed v. Does 1'1000, 2011 WL 8179131 (N.D. Ill. Mar. 31, 2011) (Doe defendants using BitTorrent technology were misjoined because they were not involved in the “same transaction, occurrence, or series of transactions or occurrence” under Rule 20); R&D Film 1, LLC v. Does 1-23, No. 13-0431 (D. Colo. Feb. 21, 2013) (same).

Indeed, in In re BitTorrent Adult Film Copyright Infringement Cases, 2012 WL 1570765, at 11 (E.D.N.Y. May 1, 2012), the court commented that “even assuming that the John Does are the actual infringers, the assertion that defendants were acting in concert rests upon a thin reed.” In severing all Doe defendants except for Doe No. 1, the court concluded that the only common threads uniting the defendants were that they were alleged to have IP addresses which were used to engage in the unauthorized reproduction and distribution of protected works via BitTorrent, finding that the swarm joinder theory was based upon “highly questionable factual assumptions” that were insufficient to meet the standards of joinder. See also, Bubble Gum Prods., LLC v. Does 1-80, 2012 WL 2953309 (S.D. Fla. July 19, 2012) (“users themselves are not choosing to engage in file sharing with other particular users ' rather, the BitTorrent protocol is determining which users to connect to in order to obtain the additional pieces of a file”).

Discretionary Severance

Many recent BitTorrent suits, particularly those involving adult films, have spurred courts to take pause before approving subpoenas to ISPs for large numbers of John Doe defendants. Fed. R. Civ. Proc. 20(b), 21 and 42(b) permit the district court “considerable discretion” to dismiss parties “on such terms as are just,” including severing and dismissing the action without prejudice against all the defendants other than the first Doe Defendant. In assessing discretionary severance in swarm joinder cases, courts consider, among other things, principles of fundamental fairness and judicial efficiencies.

First, the variety of individualized defenses among the defendants could create judicial inefficiencies. See, e.g., Digital Sins, Inc. v. Does 1-245, 2012 WL 1744838, at 3 (S.D.N.Y. May 15, 2012) (“there are no litigation economies to be gained from trying what are in essence 245 different cases together, because each of the John Does is likely to have some individual defense to assert”).

Second, the large number of defendants might produce an overly burdensome discovery process, particularly if many John Does proceed pro se , precipitating service of hard copy documents on numerous defendants and increasing the number of potential attendees at each individual defendant's deposition.

Third, it is conceivable that a meaningful percentage of the Doe defendants did not actually commit infringement and download the copyrighted work in question. See , Digital Sin, Inc. v. Does 1'176, 279 F.R.D. 239, 242 (S.D.N.Y.2012) (“Plaintiff's counsel estimated that 30% of the names turned over by ISPs are not those of individuals who actually downloaded or shared copyrighted material”). With the ubiquity of wireless routers, an IP address does not necessarily correlate to a particular alleged infringer because several people may access the same IP address, including the subscriber, a member of his or her family, an employee, invitee, neighbor or wireless network interloper. In re BitTorrent Adult Film Copyright Infringement Cases, 2012 WL 1570765, at 3-4 (E.D.N.Y. May 1, 2012) (“Thus, it is no more likely that the subscriber to an IP 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”).

Lastly, courts have noted that the copyright holders' current strategy of mass John Doe suits has created a tidal wave of litigation, while depriving courts of much needed revenue from filing fees. Filing fees not only provide crucial funding for the operation of the court, but also serve as a deterrent to the filing of frivolous suits. See, e.g., Malibu Media v. John Does 1-24, 2013 WL 105094 (M.D. Fla. Jan. 9, 2013).

Courts are also aware of the prospect that, even if a John Doe did not download the copyrighted film in question, he may feel compelled to settle the lawsuit confidentially to avoid the embarrassment of being named as a defendant in a case about allegedly unlawful trading of pornographic films. See, Digital Sin, Inc. v. Does 1'176, 279 F.R.D. at 242 (“This risk of false positives gives rise to the potential for coercing unjust settlements from innocent defendants such as individuals who want to avoid the embarrassment of having their names publicly associated with allegations of illegally downloading [of pornography]“).

Courts are also troubled by some testimony that certain copyright holders and their representatives are employing abusive litigation tactics, including coercing unjust settlement from innocent defendants. See, e.g., Patrick Collins, Inc. v. Does 1-58, 2011 U.S. Dist. LEXIS 120235, at 6 (E.D. Va. Oct. 5, 2011) (“Some defendants have indicated that the plaintiff has contacted them directly with harassing telephone calls, demanding $2,900 in compensation to end the litigation”). Moreover, courts have acknowledged the possibility that some production companies have attempted to “misuse” the subpoena powers of the court to “facilitate demand letters and coerce settlement, rather than ' litigate the claims.” See, Safety Point Products, LLC v. Does 1-14, No. 12-02812 (N.D. Ohio Apr. 4, 2013) (“It is in this environment where courts must take every caution to ensure that the keys to the doors of discovery are not blithely given to parties with other intentions”). Yet, not all copyright holders in BitTorrent cases have necessarily employed coercive settlement tactics or shown a lack of intention to litigate the disputes. See, e.g., Malibu Media, LLC v. John Doe 6, 2012 WL 5866246 (D. Colo. Oct. 25, 2012) (“this Court is not convinced that joinder of multiple defendants in one action during the pre-discovery stage necessarily contributes to any coercive settlements involving these plaintiffs, to the extent they may be occurring”). Indeed, one entity recently prevailed at trial and was awarded $112,500 in damages against a Doe defendant who had downloaded the plaintiff's films using BitTorrent, See, Malibu Media LLC v. John Does 1, 6, 13, 14 and 16, No. 12-02078 (E.D. Pa. Verdict June 10, 2013).

Conclusion

Cognizant of the reputational risks of being associated with downloading pornography, coupled with the number of false positives and reports of coercive settlement tactics, a number of courts have granted motions for protective orders that would enable Doe defendants to proceed anonymously and prevent the plaintiff from publicly naming a defendant until after discovery is conducted. For example, in In re Bittorrent Adult Film Copyright Infringement Cases, No. 12-01154 (E.D.N.Y. Dec. 3, 2012), the court, in granting John Doe No. 1's motion to proceed anonymously, noted “the questionable link between an IP address owner and the alleged infringement and the concomitant chance that reputational harm could be inflicted upon an individual” justified the protective order, as well as the minimal public interest in identifying a single accused BitTorrent infringer, “representing but a drop in a litigative ocean” in relation to the number of defendants named in mass infringement suits.

Richard Raysman is a partner at Holland & Knight LLP and a co-author of Computer Law: Drafting and Negotiating Forms and Agreements (Law Journal Press). Jonathan P. Mollod is an attorney with the firm.

Over the past several years, there has been a national flurry of civil actions brought primarily by pornographic film makers alleging copyright infringement by individual file-sharers using the BitTorrent computer protocol. As one federal court noted, hundreds of thousands of John Does have been sued across the county since mid-2010, with copyright holders attempting to assert claims against unknown defendants identified by their IP addresses by joining them, in large numbers, into single actions. Typically, the copyright holders allege that users illegally downloaded, reproduced, and distributed at least a portion of the film at issue using BitTorrent, a peer-to-peer protocol that allows users to transfer large files on the Internet.

Some commentators have characterized such cases as “copyright trolling” ' where a copyright holder files a mass infringement suit and subpoenas identifying information for anonymous Doe defendants, intending to send demand letters and achieve prompt, small settlements rather than actually litigating the claims. At least one court has echoed this view, even imposing sanctions against the copyright holders and their attorneys for certain bad faith conduct. See, Ingenuity 13 LLC v. Doe, No. 12 -8333 (C.D. Cal. May 6, 2013). However, not all suits against anonymous BitTorrent users necessarily involve an improper intent or even adult film companies. See , e.g. , John Wiley & Sons, Inc. v. Doe 1-22, 2013 WL 1091315 (S.D.N.Y. Mar. 15, 2013) (related suits over unauthorized copying and distributing of several books using BitTorrent); ReFx Audio Software, Inc. v. Does 1-82, 2013 WL 500478 (D. Colo. Feb. 13, 2013) (unauthorized distribution of software using BitTorrent).

This article discusses BitTorrent generally, as well as joinder issues that have arisen with the filing of mass copyright suits based upon the theory that each of the accused infringers participated in the same BitTorrent “swarm.”

BitTorrent Generally

BitTorrent software allows users to join together in a peer-to-peer network to make available and download large files, which may involve the sharing of copyrighted works. Within a modern BitTorrent network, the download process is unique from that of earlier generation peer-to-peer systems like Napster and Grokster. Rather than downloading a file from a single source, users of a BitTorrent network click on a .torrent file link, and, at that point, the downloading of a media work begins simultaneously from various sources around the Web. BitTorrent technology involves a multistep process:

• A user must first install a client application to facilitate the transfer of the file to the user's computer.
• Then, the user visits a BitTorrent indexing site, which collects and indexes .torrent files that point to popular copyrighted media or software files that have been uploaded by another user (the “seed file”). The .torrent files on the site do not contain the actual movie, music or software files; instead, the files contain the data used by the BitTorrent client to retrieve the content through a peer-to-peer transfer, including “hash” values that are used to identify the various pieces of the content file and the location of those pieces in the network.
• Once the user selects a file to download, “trackers” manage the download process and update the list of online “peers” that are presenting all or part of the requested file, that is, members of the “swarm.” In terms of speed, the larger the swarm, the faster the download.
• The BitTorrent client application then simultaneously downloads pieces of the content file from as many users as are available in the swarm at the time of the request, and then reassembles the content file on the user's computer when the download is complete. Once a user downloads a given file, he or she often becomes part of the “swarm” and a source for future downloads.

See generally, Diabolic Video Prods., Inc. v. Does 1'2099, 2011 WL 3100404, at 2 (N.D. Cal. May 31, 2011).

For investigators searching for instances of infringement, each swarm member can be identified by a unique alphanumeric “hashtag” number that accompanies every piece of the seed file. The investigators use this hashtag number to identify all the accused infringers that downloaded the copyrighted work with the same hashtag ' that is, members of the same swarm that downloaded the content. Using geolocation technology that examines the IP addresses of the swarm members, the copyright owner can then match each John Doe within the geographic jurisdiction of a certain district court. After bringing suit against these multiple John Does, the copyright owner typically requests early discovery and leave from the court to subpoena the defendants' ISPs to identify each John Doe.

Permissive Joinder Issues

Pursuant to Fed. Rule of Civ. P. 20(a)(2), permissive joinder of defendants is proper if: “(A) any right to relief is asserted against them jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences; and (B) any question of law or fact common to all defendants will arise in the action.” The theory behind joinder of BitTorrent swarm members is that each defendant is one of many users simultaneously uploading and downloading a protected work in a series of transactions involving common questions of law and fact. See, Raw Films, Inc. v. Does 1-32, 2011 WL 6840590 at 1 (N.D. Ga. Dec. 29, 2011).

Courts across the country are split on whether joinder of BitTorrent “swarm” participants is appropriate. Some courts have held that joinder is appropriate. See, Digital Sin, Inc. v. Does 1'176, 279 F.R.D. 239 (S.D.N.Y. 2012) (“it is difficult to see how the sharing and downloading activity [of individuals using the BitTorrent protocol in the same swarm] could not constitute a 'series of transactions or occurrences' for purposes of Rule 20(a).”); MGCIP v. Does 1'316, 2011 WL 2292958, at 2 (N.D. Ill. June 9, 2011) (“[G]iven the decentralized nature of BitTorrent's file-sharing protocol ' where individual users distribute the same work's data directly to one another without going through a central server ' the Court finds that sufficient facts have been plead to support the joinder of the putative defendants at this time.”).

However, a growing number of lower courts have held that swarm joinder is inappropriate. See, e.g., Malibu Media, LLC v. Does 1-23, 878 F.Supp.2d 628, 632 (E.D. Va. May 30, 2012) (“a plaintiff must allege facts that permit the court at least to infer some actual, concerted exchange of data between those defendants”; bare fact that a Doe defendant clicked on a command to participate in the BitTorrent Protocol does not mean that he was part of the downloading by unknown thousands of individuals across the country”); Lightspeed v. Does 1'1000, 2011 WL 8179131 (N.D. Ill. Mar. 31, 2011) (Doe defendants using BitTorrent technology were misjoined because they were not involved in the “same transaction, occurrence, or series of transactions or occurrence” under Rule 20); R&D Film 1, LLC v. Does 1-23, No. 13-0431 (D. Colo. Feb. 21, 2013) (same).

Indeed, in In re BitTorrent Adult Film Copyright Infringement Cases, 2012 WL 1570765, at 11 (E.D.N.Y. May 1, 2012), the court commented that “even assuming that the John Does are the actual infringers, the assertion that defendants were acting in concert rests upon a thin reed.” In severing all Doe defendants except for Doe No. 1, the court concluded that the only common threads uniting the defendants were that they were alleged to have IP addresses which were used to engage in the unauthorized reproduction and distribution of protected works via BitTorrent, finding that the swarm joinder theory was based upon “highly questionable factual assumptions” that were insufficient to meet the standards of joinder. See also, Bubble Gum Prods., LLC v. Does 1-80, 2012 WL 2953309 (S.D. Fla. July 19, 2012) (“users themselves are not choosing to engage in file sharing with other particular users ' rather, the BitTorrent protocol is determining which users to connect to in order to obtain the additional pieces of a file”).

Discretionary Severance

Many recent BitTorrent suits, particularly those involving adult films, have spurred courts to take pause before approving subpoenas to ISPs for large numbers of John Doe defendants. Fed. R. Civ. Proc. 20(b), 21 and 42(b) permit the district court “considerable discretion” to dismiss parties “on such terms as are just,” including severing and dismissing the action without prejudice against all the defendants other than the first Doe Defendant. In assessing discretionary severance in swarm joinder cases, courts consider, among other things, principles of fundamental fairness and judicial efficiencies.

First, the variety of individualized defenses among the defendants could create judicial inefficiencies. See, e.g., Digital Sins, Inc. v. Does 1-245, 2012 WL 1744838, at 3 (S.D.N.Y. May 15, 2012) (“there are no litigation economies to be gained from trying what are in essence 245 different cases together, because each of the John Does is likely to have some individual defense to assert”).

Second, the large number of defendants might produce an overly burdensome discovery process, particularly if many John Does proceed pro se , precipitating service of hard copy documents on numerous defendants and increasing the number of potential attendees at each individual defendant's deposition.

Third, it is conceivable that a meaningful percentage of the Doe defendants did not actually commit infringement and download the copyrighted work in question. See , Digital Sin, Inc. v. Does 1'176, 279 F.R.D. 239, 242 (S.D.N.Y.2012) (“Plaintiff's counsel estimated that 30% of the names turned over by ISPs are not those of individuals who actually downloaded or shared copyrighted material”). With the ubiquity of wireless routers, an IP address does not necessarily correlate to a particular alleged infringer because several people may access the same IP address, including the subscriber, a member of his or her family, an employee, invitee, neighbor or wireless network interloper. In re BitTorrent Adult Film Copyright Infringement Cases, 2012 WL 1570765, at 3-4 (E.D.N.Y. May 1, 2012) (“Thus, it is no more likely that the subscriber to an IP 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”).

Lastly, courts have noted that the copyright holders' current strategy of mass John Doe suits has created a tidal wave of litigation, while depriving courts of much needed revenue from filing fees. Filing fees not only provide crucial funding for the operation of the court, but also serve as a deterrent to the filing of frivolous suits. See, e.g., Malibu Media v. John Does 1-24, 2013 WL 105094 (M.D. Fla. Jan. 9, 2013).

Courts are also aware of the prospect that, even if a John Doe did not download the copyrighted film in question, he may feel compelled to settle the lawsuit confidentially to avoid the embarrassment of being named as a defendant in a case about allegedly unlawful trading of pornographic films. See, Digital Sin, Inc. v. Does 1'176, 279 F.R.D. at 242 (“This risk of false positives gives rise to the potential for coercing unjust settlements from innocent defendants such as individuals who want to avoid the embarrassment of having their names publicly associated with allegations of illegally downloading [of pornography]“).

Courts are also troubled by some testimony that certain copyright holders and their representatives are employing abusive litigation tactics, including coercing unjust settlement from innocent defendants. See, e.g., Patrick Collins, Inc. v. Does 1-58, 2011 U.S. Dist. LEXIS 120235, at 6 (E.D. Va. Oct. 5, 2011) (“Some defendants have indicated that the plaintiff has contacted them directly with harassing telephone calls, demanding $2,900 in compensation to end the litigation”). Moreover, courts have acknowledged the possibility that some production companies have attempted to “misuse” the subpoena powers of the court to “facilitate demand letters and coerce settlement, rather than ' litigate the claims.” See, Safety Point Products, LLC v. Does 1-14, No. 12-02812 (N.D. Ohio Apr. 4, 2013) (“It is in this environment where courts must take every caution to ensure that the keys to the doors of discovery are not blithely given to parties with other intentions”). Yet, not all copyright holders in BitTorrent cases have necessarily employed coercive settlement tactics or shown a lack of intention to litigate the disputes. See, e.g., Malibu Media, LLC v. John Doe 6, 2012 WL 5866246 (D. Colo. Oct. 25, 2012) (“this Court is not convinced that joinder of multiple defendants in one action during the pre-discovery stage necessarily contributes to any coercive settlements involving these plaintiffs, to the extent they may be occurring”). Indeed, one entity recently prevailed at trial and was awarded $112,500 in damages against a Doe defendant who had downloaded the plaintiff's films using BitTorrent, See, Malibu Media LLC v. John Does 1, 6, 13, 14 and 16, No. 12-02078 (E.D. Pa. Verdict June 10, 2013).

Conclusion

Cognizant of the reputational risks of being associated with downloading pornography, coupled with the number of false positives and reports of coercive settlement tactics, a number of courts have granted motions for protective orders that would enable Doe defendants to proceed anonymously and prevent the plaintiff from publicly naming a defendant until after discovery is conducted. For example, in In re Bittorrent Adult Film Copyright Infringement Cases, No. 12-01154 (E.D.N.Y. Dec. 3, 2012), the court, in granting John Doe No. 1's motion to proceed anonymously, noted “the questionable link between an IP address owner and the alleged infringement and the concomitant chance that reputational harm could be inflicted upon an individual” justified the protective order, as well as the minimal public interest in identifying a single accused BitTorrent infringer, “representing but a drop in a litigative ocean” in relation to the number of defendants named in mass infringement suits.

Richard Raysman is a partner at Holland & Knight LLP and a co-author of Computer Law: Drafting and Negotiating Forms and Agreements (Law Journal Press). Jonathan P. Mollod is an attorney with the firm.