BitTorrent Litigation: Joinder of Swarm Improper But Expedited Ex Parte Discovery Granted Against Peer To Peer Filesharer Doe Number 1

Decision in full:

United States District Court,


N.D. California.

PACIFIC CENTURY INTERNATIONAL LTD., Plaintiff,

v.

DOES 1–101, Defendants.
No. C–11–02533–(DMR).

July 8, 2011.

Brett Langdon Gibbs, Steele Hansmeier, PLLC, Mill Valley, CA, for Plaintiff.

ORDER GRANTING PLAINTIFF'S EX PARTE APPLICATION FOR LEAVE TO TAKE EXPEDITED DISCOVERY IN PART; SEVERING DOE DEFENDANTS FROM CASE; AND ORDERING DISMISSAL OF THEIR CLAIMS

DONNA M. RYU, United States Magistrate Judge.

*1 Plaintiff Pacific Century International, Ltd. (“Plaintiff”) moves the court ex parte pursuant to Federal Rules of Civil Procedure 26 and 45 for leave to take expedited discovery so that it may unearth the identities of the as-of-yet unnamed defendants (“Defendants”) in this action. For the reasons provided below, the court grants Plaintiff's motion in part, severs Defendants Does 2–101 from this action, and orders that the claims against Does 2–101 be dismissed due to improper joinder.

I. Expedited Discovery

This action seeks to stop Defendants from reproducing and distributing Plaintiff's copyrighted work Amateur Cream Pies—Erin Stone (“the Work”) via peer-to-peer (“P2P”) file swapping networks. (Compl.¶¶ 1, 7.) Specifically, Plaintiff contends that by using the BitTorrent protocol, Defendants have committed copyright infringement under 17 U.S.C. §§ 101–1322 and engaged in a civil conspiracy under California law to do so. (Compl.¶¶ 25–39 .) Because the alleged infringement occurred on the Internet, Defendants acted under the guise of their Internet Protocol (“IP”) addresses rather than their real names. (Compl.¶ 8.) Therefore, Plaintiff cannot determine Defendants' true identities without procuring the information from Defendants' respective Internet Service Providers (“ISPs”), which can link the IP addresses to a real individual or entity. (Compl.¶ 8.) Consequently, Plaintiff asks the court to grant it expedited discovery to issue subpoenas to the relevant ISPs so that the ISPs will produce the name, address, telephone number, email address, and Media Access Control information attached to each IP address that Plaintiff to date has discovered through its own investigations. (Pl.'s Ex Parte Application for Leave to Take Expedited Discovery (“Pl.'s Mot.”) 1–3, Ex. A.) Plaintiff also notes that “time for discovery is of the essence. Typically, ISPs keep log files of subscriber activities for only limited periods of time before erasing the data.” (Pl.'s Mot. 4 (citing Hansmeier Decl. ¶¶ 21–22, May 26, 2011; Gibbs Decl. ¶ 5, May 26, 2011) (internal citation omitted).)

Although in the Ninth Circuit courts disfavor exceptions to the general rules of discovery, Columbia Ins. Co. v. Seescandy.com, 185 F.R.D. 573, 577 (N.D.Cal.1999) (citing Gillespie v. Civiletti, 629 F.2d 637, 642 (9th Cir.1980)), a court will grant a motion for expedited discovery “upon a showing of good cause,” Am. Legalnet, Inc. v. Davis, 673 F.Supp.2d 1063, 1066 (C.D.Cal.2009) (quoting In re Countrywide Fin. Corp. Derivative Litig., 542 F.Supp.2d 1160, 1179 (C.D.Cal.2008)) (quotation marks omitted); accord Semitool, Inc. v. Tokyo Electron Am., Inc., 208 F.R.D. 273, 275 (N.D.Cal.2002), unless the court finds that discovery “would not uncover [the defendants'] identities, or that the complaint would be dismissed on other grounds.” Gillespie, 629 F.2d at 642 (citations omitted). Good cause exists where “the need for expedited discovery, in consideration of the administration of justice, outweighs the prejudice to the responding party.” FN1 Am. Legalnet, Inc., 673 F.Supp.2d at 1066 (quoting In re Countrywide Fin. Corp. Derivative Litig., 542 F.Supp.2d at 1179) (quotation marks omitted); accord Semitool, Inc., 208 F.R.D. at 276. The court must perform this evaluation in light of “the entirety of the record ... and [examine] the reasonableness of the request in light of all the surrounding circumstances.” Semitool, Inc., 208 F.R.D. at 275 (citation & quotation marks omitted) (emphasis removed); see Am. Legalnet, Inc., 673 F.Supp.2d at 1067. In this particular context, the court must balance “the need to provide injured parties with an [sic] forum in which they may seek redress for grievances” against “the legitimate and valuable right to participate in online forums anonymously or pseudonymously .... without fear that someone who wishes to harass or embarrass them can file a frivolous lawsuit and thereby gain the power of the court's order to discover their identity.” Columbia Ins. Co., 185 F.R.D. at 578; see also London–Sire Records, Inc. v. Doe 1, 542 F.Supp.2d 153, 163 & nn. 10–11, 179 (D.Mass.2008) (noting that even copyright infringing file downloading entitled to degree of First Amendment protection) (holding that court must consider “the expectation of privacy held by the Doe defendants, as well as other innocent users who may be dragged into the case (for example, because they shared an IP address with an alleged infringer.)” (citation omitted)); Sony Music Entm't, Inc. v. Does 1–40, 326 F.Supp.2d 556, 564 (S.D.N.Y.2004).

FN1. The court notes that due to the necessarily ex parte nature of Plaintiff's motion, Plaintiff faces no adversaries to fully expound on the prejudices that Defendants may face if the court grants Plaintiff expedited discovery. However, other measures to at least partially compensate for this inequity are at the court's disposal. See, e.g., Brief for Amici Curiae at 3, 18–19, Call of the Wild Movie, LLC v. Does 1–358, No. 10–CV–455 (D.D.C. Jan. 3, 2011) (recommending that courts order ISPs to notify customers of impending subpoenas so that customers have opportunity to quash); see also 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).

*2 Plaintiff has shown good cause to partake in limited expedited discovery. First, without issuing subpoenas to the ISPs at this time, Plaintiff will “have no other way to obtain this most basic information,” Defendants' identities, without which the lawsuit cannot proceed. UMG Recordings, Inc. v. Does 1–4, No. 06–652, 2006 WL 1343597, at *1 (N.D.Cal. Apr.19, 2006) (not reported in F.Supp.); accord Diabolic Video Prods., Inc. v. Does 1–2,099, No. 10–CV–5865, at *4–5 (N.D.Cal. May 31, 2011) (order granting in part motion for leave to take limited discovery prior to Rule 26(f) conference); Io Group, Inc. v. Does 1–435, No. 10–4382, at *1 (N .D.Cal. Oct. 15, 2010) (order granting plaintiff's request for leave to take early discovery); Semitool, Inc., 208 F.R.D. at 276. ( Accord Hansmeier Decl. ¶ 21; Gibbs Decl. ¶ 2.) Furthermore, there exists a high risk that the ISPs may destroy the information Plaintiff seeks and thereby preclude Plaintiff from discovering Defendants' true identities. UMG Recordings, Inc., 2006 WL 1343597, at *1. ( Accord Hansmeier Decl. ¶ 22; Gibbs Decl. ¶ 5.) Finally, copyright infringement claims “necessarily involve[ ] irreparable harm to Plaintiff[ ], as a copyright holder is presumed to suffer irreparable harm as a matter of law” when the ambit of its copyright is invaded. UMG Recordings, Inc., 2006 WL 1343597, at * 1. Nevertheless, the court grants Plaintiff expedited discovery only in part because the court dismisses the complaint against all but Doe 1 for improper joinder. See Gillespie, 629 F.2d at 642.

II. Joinder of Defendants

Rule 20 of the Federal Rules of Civil Procedure, in relevant part, permits a plaintiff to join multiple defendants into one action if “(A) any right to relief is asserted against them ... 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.” Fed.R.Civ.P. 20(a)(2). When determining whether defendants are joined properly, the court should “liberally construe[ ] [the requirements] in the interest of convenience and judicial economy in a manner that will secure the just, speedy, and inexpensive termination of the action.” Call of the Wild Movie, LLC v. Does 1–1,062, No. 10–455, 2011 WL 996786 (D.D.C. Mar.22, 2011) (citation & quotation marks omitted); see United Mine Workers of Am. v. Gibbs, 383 U.S. 715, 724, 86 S.Ct. 1130, 16 L.Ed.2d 218 (1966); Diabolic Video Prods., Inc., No. 10–CV–5865, at *5. If defendants do not satisfy the test for permissive joinder, the court may sever the misjoined parties, “so long as no substantial right will be prejudiced by the severance.” Coughlin v. Rogers, 130 F.3d 1348, 1350 (9th Cir.1997) (citation omitted); see Fed.R.Civ.P. 21 (“Misjoinder of parties is not a ground for dismissing an action.”).

Attempts to join numerous defendants in a single action for copyright infringement over P2P networks historically have failed. For example, in Interscope Records v. Does 1–25, No. 4–CV–197, 2004 U.S. Dist. LEXIS 27782 (M.D.Fla. Apr. 1, 2004) (not reported in F.Supp.), and Elektra Entertainment Group, Inc. v. Does 1–9, No. 04–Civ–2289, 2004 WL 2095581 (S.D.N.Y. Sept.8, 2004) (not reported in F.Supp.), courts found misjoinder when plaintiffs brought suit against multiple defendants for downloading copyrighted materials using the Fast Track P2P network. Fast Track “allows users to have their computers function as an interactive Internet site, disseminating files for other users to copy.” Elektra Enter. Group, Inc., 2004 WL 2095581, at * 1. An individual accessing the Fast Track network thus may download an entire file directly from another user's computer. See id. The Interscope Records and Elektra Entertainment Group courts held that the respective complaints fell afoul of Rule 20(a)(2)(A) because they claimed only that the defendants used Fast Track to perform their illegal downloads and did not suggest that the defendants engaged in the same transaction, occurrence, or series of transactions or occurrences. 2004 U.S. Dist. LEXIS 27782, at *10, 2004 WL 2095581, at *7. Notably, the Interscope Records court suggested that a showing that a defendant downloaded protected works from another defendant “could conceivably link” them for joinder purposes. 2004 U.S. Dist. LEXIS 27782, at *10. This scenario also arose in cases involving the P2P network Gnutella. In Fonovisa, Inc. v. Does 1–9, the court granted severance to a defendant who claimed misjoinder because the “Plaintiffs have failed to allege any facts tending to show that one or more of the Defendants has actually downloaded songs from another Defendant, which could conceivably link the Defendants or show they acted in concert[;]” the plaintiffs simply alleged that the defendants had used the same P2P network. No. 07–1515, 2008 WL 919701, at *5–6 (W.D.Pa. Apr.3, 2008) (not reported in F.Supp.). Suits against users of the more sophisticated P2P network eDonkey2000 faced the same obstacles. In Io Group, Inc. v. Does 1–435, the court stated that the complaint contained “no factual allegations to support the assertion that the Does defendants are connected to the same transaction, occurrence or series of transactions or occurrences, or any facts that show they specifically acted in concert,” and therefore severed the defendants. No. C–10–4382, 2011 WL 445043, at *3 (N.D.Cal. Feb.3, 2011); accord Io Group, Inc. v. Does 1–435, No. C–10–4382, 2011 WL 1219290 (N.D.Cal. Jan.10, 2011).
*3 Plaintiff insists that the BitTorrent protocol now before the court differs from these older forms of P2P transfer due to the newer technology's “deep and sustained collaborati[ve]” nature. (Pl.'s Mot. 10, 13.) Unlike most earlier means of file sharing, BitTorrent can link up to hundreds of users, colloquially known as a “swarm,” to distribute data. (Pl.'s Mot. 14–15 (citing Hansmeier Decl. ¶ 10).) As Plaintiff explains, BitTorrent operates as follows:
First, the protocol breaks a single large file into a series of smaller distributable pieces. Then, an initial file-provider (the “seeder”) intentionally elects to distribute the pieces to third parties.... Other users (“peers”) on the network download a small “torrent” file that contains directions on where to find the seeder as well as an index of the pieces. The torrent file is loaded into BitTorrent software, and the software follows the directions in the torrent file to connect to the seeder. When peers connect to the seeder, they download random pieces of the file being seeded. When a piece of download is complete, the peers automatically become seeders with respect to the downloaded pieces. In other words, each peer in a swarm transforms from a pure downloader ... to a peer that is simultaneously downloading and distributing pieces of a file.
(Pl.'s Mot. 15–16 (citing Hansmeier Decl. ¶¶ 4–10) (internal citations omitted).) For example, an initial “seeder” may upload a low definition file of an episode of a television show that she enjoys, which the BitTorrent protocol divides into tiny pieces. Other users who wish to obtain this low definition version will begin downloading pieces of the file until they have a complete version. Users who successfully have downloaded pieces of the file will commence “seeding” them to other users as they download the remainder of that file. Eventually, numerous users come to download and/or distribute pieces of the file with each other. Together, these individuals constitute a “swarm”—users seeding and/or downloading the specific file. According to Plaintiff, it is this swarming capability that sets BitTorrent apart from the more limiting, individual-to-individual nature of earlier P2P platforms.
However, Plaintiff glosses over the fact that BitTorrent users may upload different initial files of a given work, which results in the creation of distinct swarms. See Lin Ye et al., A Measurement Study on BitTorrent System, 3 Int'l J. Comm, Network & Sys. Sci 916, 916 (2000); see also Ankur Patel, Comment, BitTorrent Beware: Legitimizing BitTorrent Against Secondary Copyright Liability, 10 Appalachian J.L. 117, 119 (2011). Turning back to the example above, a second initial “seeder” may not enjoy television shows in low definition and instead decide to upload a high definition file of the same episode for distribution. Notably, because of the differences between the first, low definition file and the second, high definition file, the participants in the first swarm would not interact with those in the second swarm. ( See Hansmeier Decl. ¶ 9 (noting that swarms develop around originally seeded file, as opposed to a particular work ).) That BitTorrent users have downloaded the same copyrighted work does not, therefore, evidence that they have acted together to obtain it.
*4 Because of this fundamental constraint on the collaboration between copyright infringers using the BitTorrent protocol, the court finds that Plaintiff cannot meet the permissive joinder requirement of Rule 20(a)(2)(A).FN2 Although Plaintiff explains the protocol and how it differs from its predecessor P2P programs, and specifically claims that Defendants have engaged in a civil conspiracy (Compl.¶¶ 32–39), Plaintiff still has failed to demonstrate that it has “any right to relief against [Defendants] .... arising out of the same transaction, occurrence, or series of transactions or occurrences.” Fed.R.Civ.P. 20(a)(2)(A). This deficiency proves fatal to Plaintiff's attempt to join Defendants because the only commonality between copyright infringers of the same work is that each “commit [ted] the exact same violation of the law in exactly the same way.” LaFace Records, LLC v. Does 138, No. 07–CV–298, 2008 WL 544992, at *2 (E.D.N.C. Feb. 27, 2008) (not reported in F.Supp.) (citation & quotation marks omitted); accord Diabolic Video Prods., Inc., No. 10–CV–5865, at *6 (“[T]he mere allegation that defendants have used the same peer-to-peer network to infringe a copyrighted work is insufficient to meet the standards for joinder set forth in Rule 20.”). The court therefore severs Defendants Does 2–100 from this action. Fed.R.Civ.P. 21; see Coughlin, 130 F.3d at 1350.
FN2. Because the court makes its ruling on the first prong of the permissive joinder test, it need not address the second prong. Moreover, the court does not touch on other critical questions, such as whether joinder of Defendants “would prejudice any party,” “result in needless delay,” Call of the Wild Movie, LL C, 2011 WL 996786, at *4 (citing Lane v. Tschetter, No. 05–1414, 2007 WL 2007493, at *7 (D.D.C. July 10, 2007); M.K. v. Tenet, 216 F.R.D. 113, 138 (D.D.C.2002)); see BMG Music v. Does 1–203, No. 04–650, 2004 WL 953888, at *1 (E.D.Pa. Apr.2, 2004) (not reported in F.Supp.), or impair the administrative efficiency of the Court. See id. at 6 (citing London–Sire Records, Inc., 542 F.Supp.2d at 161). It also does not address whether the court may exercise personal jurisdiction over Defendants. See GTE New Media Servs., Inc. v. BellSouth Corp., 199 F.3d 1343, 1349–50 (D.C.Cir.2000); Block Indus. v. DHJ Indus., Inc., 495 F.2d 256, 259 (8th Cir.1974).

III. Conclusion

For the reasons above, the court ORDERS that Plaintiff's Motion for Ex Parte Application for Leave to Take Expedited Discovery is GRANTED IN PART; it is further ORDERED that Defendant Does 2–100 are SEVERED from this action; and it is further ORDERED that Plaintiff's claims against Defendants Does 2–100 be DISMISSED without prejudice for improper joinder.

Moreover, it is hereby ORDERED that Plaintiff is allowed to serve immediate discovery on Doe 1's ISP by serving a Rule 45 subpoena that seeks information sufficient to identify Doe 1, including the name, addresses, telephone numbers, and email addresses of Doe 1. The subpoena shall include a copy of this order.

It is further ORDERED that the ISP will have 30 days from the date of service upon it to serve Doe 1 with a copy of the subpoena and a copy of this order. The ISP may serve Doe 1 using any reasonable means, including written notice sent to Doe 1's last known address, transmitted either by first-class mail or via overnight service. The ISP and Doe 1 each shall have 30 days from the date of service to file any motions in this court contesting the subpoena (including a motion to quash or modify the subpoena). If that 30–day period lapses without Doe 1 or the ISP contesting the subpoena, the ISP shall have 10 days to produce to Plaintiff the information responsive to the subpoena with respect to Doe 1.





It is further ORDERED that the ISP shall not assess any charge to Plaintiff in advance of providing the information requested in the subpoena, and that the ISP that receives a subpoena and elects to charge for the costs of production shall provide a billing summary and cost reports that serve as a basis for such billing summary and any costs claimed by the ISP.





*5 It is further ORDERED that the ISP shall preserve all subpoenaed information pending the ISP's delivering such information to Plaintiff or the final resolution of a timely filed and granted motion to quash the subpoena with respect to such information.





It is further ORDERED that Plaintiff may use any information disclosed in response to a subpoena solely to protect its rights under the Copyright Act, 17 U.S.C. § 101 et seq.





To the extent that this order may be dispositive, the court does not require the consent of Defendants because they have not been served and therefore are not parties under the meaning of 28 U.S.C. § 636(c). See Ornelas v. De Frantz, No. 00–1067, 2000 WL 973684, at *2 n. 2 (N.D.Cal. June 29, 2000) (citing Neals v. Norwood, 59 F.3d 530, 532 (5th Cir.1995)).

IT IS SO ORDERED.







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How To Sue and Discover A BitTorrent Swarm: Liberty Media, A Swarm of John Does and the Cable Privacy Act

Corbin Fisher's Down on the Farm  (Retail Price 69.95)

 In Liberty Media Holdings, LLC v. Swarm of November 16, 2010, Sharing Hash File A3E.... and John Does 1-95 2011 WL 1597495 (S.D. Cal. April 26, 2011), the court permitted suit and early discovery, together with claims for copyright infringement, civil conspiracy and negligence against a BitTorrent swarm that accessed and downloaded plaintiff's copyrighted work.   

Plaintiff identified the copyrighted work that had been accessed and copied by the BitTorrent swarm.  Plaintiff was able to identify to the court the Internet Protocol (IP) addresses of each of the members of the swarm, but was unable to serve any of the individuals because Plaintiff lacked their names and addresses.

The court found that the Cable Privacy Act, 47 U.S.C. 551(c)(1) applies.  The Cable Privacy Act requires cable companies to inform subscribers before any of their confidential information is turned over.

Under Rule 26 of the Federal Rules of Civil Procedure, discovery may not commence until the parties have had a "meet and confer" under Rule 26(f).     However, in rare cases where the plaintiff cannot learn the defendants' identities without limited discovery, courts may order such discovery.

From the opinion:

Although discovery usually takes place only after a defendant has been served, “[s]ervice of process can pose a special dilemma for plaintiffs in cases ... in which the tortious activity occurred entirely on-line ... because the defendant may have used a fictitious name and address in the commission of the tortious acts.” Columbia Ins. Co. v. Seescandy.com, 185 F.R.D. 573, 577 (N.D.Cal.1999). Accordingly, courts have, in rare cases, “permitt[ed] limited discovery to ensue after filing of the complaint to permit the plaintiff to learn the identifying facts necessary to permit service on the defendant.” Id. (citations omitted).


In determining whether a motion for expedited discovery should be granted to identify anonymous Internet users named as Doe defendants, courts consider whether: (1) the plaintiff can “identify the missing party with sufficient specificity such that the Court can determine that defendant is a real person or entity who could be sued in federal court”; (2) the plaintiff has “identif [ied] all previous steps taken to locate the elusive defendant”; and (3) the “plaintiff's suit against defendant could withstand a motion to dismiss.” Id. at 578–80.

Liberty Media Holdings, LLC v. Swarm of November 16, 2010, Sharing Hash File A3E6F65F2E3D672400A5908F64ED55B66A0880B8 2011 WL 1597495, 2 (S.D.Cal.) (S.D.Cal.,2011)

The court permitted subpoenas to be served pursuant to Rule 45 of the Federal Rules of Civil Procedure on the cable companies and directed that the cable companies inform individual subscribers that their personal information was being requested.   The court denied further discover due to Plaintiff's failure to specify the precise discovery sought.

Interesting that the court permitted a negligence claim against individual IP address holders to proceed.



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Rule 26(e) of the Federal Rules of Civil Procedure: Production of Images After Discovery Cut-Off Ok'd

In Teter v. Glass Onion, Inc, 2010 WL 2945520 (W.D. Mo. July 22, 2010), the court considered a motion pursuant to Rule 37(c) of the Federal Rules of Procedure to exclude from evidence images culled from the internet and Internet Archive after the discovery cutoff.

Rule 26(e) of the Federal Rules of Civil Procedure provides:

(e) Supplementation of Disclosures and Responses.

(1) In General.
A party who has made a disclosure under Rule 26(a) — or who has responded to an interrogatory, request for production, or request for admission — must supplement or correct its disclosure or response:
(A) in a timely manner if the party learns that in some material respect the disclosure or response is incomplete or incorrect, and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing; or
(B) as ordered by the court.

 In Teter, the plaintiff requested all documents that were to be used at trial during a formal discovery request.
 
Rule 37(c) of the Federal Rules of Civil Procedure provides:
 
(c) Failure to Disclose; to Supplement an Earlier Response, or to Admit.

(1) Failure to Disclose or Supplement.
If a party fails to provide information or identify a witness as required by Rule 26(a) or 26(e), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless. In addition to or instead of this sanction, the court, on motion and after giving an opportunity to be heard:
(A) may order payment of the reasonable expenses, including attorney's fees, caused by the failure;
(B) may inform the jury of the party's failure; and
(C) may impose other appropriate sanctions, including any of the orders listed in Rule 37(b)(2)(A)(i)-(vi).

[ * * * ]

In this case, the materials were provided 20 days after the close of discovery.  The court found that the images were publicly available to both sides from a public domain source, the adversary could not possibly be prejudiced.

I cover Discovery in Chapter 14 of the Copyright Litigation Handbook.  Not every judge takes Teter's common-sense view.   And Teter should not be seen as a free pass from a discovery cut-off.   When discovery has already been produced and new materials come in, scan the new materials, privilege review/redact/log them, and get them out right away with a cover letter saying you are supplementing pursuant to Rule 26(e).  Not every judge will permit documents produced after a discovery cutoff to be used in a trial.  


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Two New Cases - Copyright Act: Infringement Plaintiff's Chain of Title Must Be Proven By Writings

Federico Fellini's La Dolce Vita From Wikipedia

Two recent cases underline the importance of being able to prove a written chain of title if you would like to bring a claim for copyright infringement.   If you wish to sue a gay pornographer for making a version of your film (Michael Lucas' La Dolce Vita).  In both International Media Films, Inc. v. Lucas Entertainment, Inc., 2010 WL 125358 (March 31, 2010) and  American Plastic Equipment, Inc. v. Toytrackerz, LLC, 2010 WL 1284471 (March 31, 2010), each copyright infringement plaintiff could not prove a chain of title showing ownership of the copyrighted work.

17 U.S.C. 204(a) says that transfers of exclusive rights need to be in writing.  There is an exception for non-exclusive writings and transfers "by operation of law".

The Fellini plaintiff had documents that looked liked they had been faked in Lichtenstein.

It looks like the American Plastic Equipment plaintiff did actually own the copyright, but didn't bother searching bankruptcy court records prior to judgment and waited until 60 days after judgment was entered against it to make a motion with "newly discovered evidence".

That is why it is so important to do research before bringing a lawsuit.   Document your chain of title and register your ownership with the Copyright Office.

 

Document Production During Discovery: Search and Redact with Acrobat 8 Pro

Redaction is the process of removing information from documents. You can see from the attached image, which is a slide that I recently used in a litigation, I have redacted the title of the slide using Adobe Acrobat 8 Pro.

One of the most tedious and time-consuming jobs in litigation is producing privilege logs and redacting sensitive proprietary information such as trade secrets, medical information, credit card and social-security information from documents. Mistakes are often made, even by the largest and most sophisticated law firms. Computers and technology can ease the problem, but in the end, any mechanical device will make errors that need to be checked by thinking, trained humans.

The combination of high-speed scanning and electronic filing requirements in many courts have forced the electronic age onto many litigators, and now the game is figuring out how to sort through, organize and work efficiently with large quantities of documents in PDF format.

Fortunately, Adobe has created some powerful tools to save time and money. Let's say you have documents that need to potentially be produced to the adversary. Scan them. You can Bates-number them right in Acrobat (Advanced/Document Processing/Bates Numbering/Add). You probably want to break the documents down into PDFs of manageable size. Under the Acrobat "Document" dropdown menu, use "Recognize text using OCR". OCR is optical character recognition. It means that your computer will read the text contained in the PDF as text, rather than as an image. If a PDF is saved as an image, your computer will not pick up any of the words in the text.

To create a privilege log, in looking for attorney/client or work product-privileged documents, one could simply search, say an attorney's name and go through one-by-one each mention. This is a slow process. If you go to the "Advance" dropdown menu, hit Redaction. Then "Search and Redact". A search on the attorney's name will now mark every instance in the document that the attorney's name appears and give you a handy table so that you can jump to each instance the name appears. Since you probable want to eliminate more information than just the attorney's name, you would mark for redaction (see below) all of the privileged information.

To "blacken out" information that you wish to redact, once you have scanned and saved the PDF, go to the "Advanced" dropdown menu. Click on "Redaction". Click on "Show redaction toolbar". Now you can search the entire document to find every instance of a particular word, "Mark for Redaction" and then "Apply Redactions". Make sure to read the help features. Also make sure to save the document with a new name and to make sure to delete metadata as you are leaving the document (a self-explanatory screen pops up as you leave the document).

Why is this redaction function so important? Well, according to Adobe, it really gets rid of the underlying information so that a tech person cannot figure out a way around it. There are some famous instances, reported here and here of people thinking that they'd blacked out information, but people were able to simply look behind the blackened-out portion to find confidential personal information and important government secrets.

Caveat: read the help screens and warnings carefully. OCR is not perfect, and it will not pick up handwriting, images, or text that is not properly aligned. For example, the image above of Chief Inspector Benesch contained both text (the title) and a provenance of the artwork that had been scanned as an image. So if I searched the word "Benesch" to redact, the search function would not pick up the word "Benesch" from the image portion of the slide.

DO NOT WORK FROM ORIGINALS. You must make sure that you have an entire original set saved somewhere safe, because redaction actually removes information, thus destroying the original file. Adobe puts warning screens in to remind you of this. There is no technological shortcut that will bypass a trained set of eyes conducting the review, but proper use of this powerful tool should be a big timesaver.

Bates Numbering with Adobe Acrobat 8 Pro

I have just mastered the Bates-numbering function of Adobe 8 Pro. It enables you to Bates-number large quantities of PDF files. Given that most cases are now filed electronically, this makes it that much easier to never see paper in the office. Adobe lets you place a large number of PDFs into one window, reorganize them, then insert a Bates-number into the first page of the first document that then continues throughout the rest of the batch. You can also easily search for documents by Bates number.

Working in a complex international case, I fought for a long time to convince my European counterparts of the wisdom of Bates-numbering. Now that documents number in the thousands, they are convinced of the wisdom!

I don't know how long lawyers have been seriously Bates-numbering documents, but I recently had occasion to review the Nuremberg trial exhibits in the USGPO publication Nazi Conspiracy and Agression (1946). It seems that each international team of prosecutors was using a unique Bates-style system to stamp hundreds of thousands of documents as they were received.

Probably only lawyers could get so worked up about page numbers, but there is nothing worse than collecting useless evidence because you can't tell what a witness was looking at, or fumbling around with mis-numbered or unnumbered pages in a courtroom.

Some Bates-numbering background and history from Wikipedia:

Bates numbering (also known as Bates stamping or Bates coding) is used in the legal, medical, and business fields to place identifying numbers and/or date/time-marks on images and documents as they are scanned or processed (for example, during the discovery stage of preparations for trial or identifying business receipts). Bates Stamping can be used to mark and identify images with copyrights by putting a company name, logo and/or legal copyright on them. This process provides identification, protection, and auto-increment numbering of the images.
Bates numbering is commonly used as an organizational method to label and identify legal documents. During the discovery phase of litigation, a large number of documents might necessitate the use of unique identifiers for each page of each document for reference and retreival. Bates numbering (named for the Bates automatic numbering machine), assigns an arbitrary unique identifier to each page. Such "numbering" may be solely numeric or may contain a combination of letters and numbers (alphanumeric). There is no standard method for numbering documents. Examples of Bates numbers schemes used in tobacco cases may be found here.
Manual Bates stamping uses a self inking stamp with numbered wheels (5, 6, and 7-wheeled models are common) that automatically increment each time the stamp is pressed down on a page (some stamps allow for duplicate documents by only incrementing after two or more presses). Today, preprinted, self-adhesive labels are common as is electronic document discovery (EDD) software that can electronically "stamp" documents stored as computer files by superimpsoing numbers onto them.
The Bates Automatic Numbering Machine was patented in 1891-93 by the Bates Manufacturing Company of Edison, NJ.[1]
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