Case 1:12-cv-10815-FDS Document 15 Filed 11/05/12 Page 1 of 9
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`_______________________________________
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`PARADOX PICTURES, INC.,
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`Plaintiff,
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`v.
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`DOES 1 - 20,
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`Defendants.
`_______________________________________
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`Civil Action No.
`12-10815-FDS
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`MEMORANDUM AND ORDER
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`SAYLOR, J.
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`This case is one of a number of similar copyright infringement actions filed in this court
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`by adult film producers against large numbers of unnamed “Doe” defendants.1 The plaintiffs’
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`claims and filings are virtually identical in all of these cases, and they have been brought by the
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`same attorney. The strategy implemented by these plaintiffs has been to file mass copyright
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`infringement lawsuits against “Doe” defendants known only by their IP addresses, alleging that a
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`person associated with each IP address illegally reproduced a pornographic film using BitTorrent
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`file sharing technology as part of single “swarm.” Plaintiffs then move for expedited discovery
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`of the information identifying the defendants by means of Rule 45 subpoenas served on the
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`relevant Internet Service Providers (“ISPs”).
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`In a number of cases, district courts have exercised their discretion under Fed. R. Civ. P.
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`20 to sever and dismiss the action against all of the “Doe” defendants but one. This Court issued
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`1 See, e.g., New Sensations, Inc. v. Does 1 - 83, 12-cv-10944 (D. Mass.); New Sensations, Inc. v. Does 1 -
`175, 12-cv-11721 (D. Mass.); SBO Pictures v. Does 1-41, Case No. 12-cv-10804 (D. Mass.); Third World Media,
`LLC v. Does 1-21, Case No. 12-cv-10947 (D. Mass.); PW Productons, Inc. v. Does 1 - 19, Case No. 12-cv-10814
`(D. Mass.); Third Degree Films v. Does 1-72, Case No. 12-cv-10760 (D. Mass.).
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`Case 1:12-cv-10815-FDS Document 15 Filed 11/05/12 Page 2 of 9
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`an order directing plaintiff to show cause why it should not do the same here.
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`Because, after reviewing plaintiff’s response to that order, the Court finds that joinder in
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`such a case is neither proper under Rule 20(a), nor advisable pursuant to the factors under 20(b),
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`the Court will exercise its discretion under Rule 21 and sever all of the “Doe” defendants except
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`“John Doe #1.” Plaintiff will be permitted to refile against each of the other defendants in
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`separate actions if it so elects.
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`I.
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`Background
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`A.
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`Factual Background
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`Plaintiff, Paradox Pictures, Inc., (“PPI”) is a California corporation and the owner of the
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`copyright for the motion picture “OMG... It's The Nanny XXX Parody.” (Compl. ¶ 8). PPI
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`alleges that each of the 83 “Doe” defendants has infringed PPI’s copyright by “reproduc[ing]
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`and/or distribut[ing] to the public . . . at least a substantial portion of the Motion Picture.” (Id. at
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`¶ 19). PPI alleges that other infringers using defendants’ Internet accounts through the
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`BitTorrent network also have illegally reproduced the copyrighted work. The “Doe” defendants
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`are unknown to PPI, other than by the IP address assigned to him or her by an ISP.
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`BitTorrent technology facilitates large data transfers across so-called “peer-to-peer”
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`(“P2P”) networks at high speeds. (Compl. ¶ 9). When the first file-provider decides to share a
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`file (“seed”) with a BitTorrent network, the protocol breaks that single large file into a series of
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`smaller pieces. Brown v. Thames, 2011 U.S. Dist. LEXIS 82746, *5-6 (C.D. Cal. June 15,
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`2011). Then, when a new network user (“peer”) downloads the large file, the file is assembled
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`by combining a different piece of the data from each peer who has already downloaded the file.
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`(Compl. ¶ 9). This differs from traditional P2P network downloading, in that the entire file does
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`Case 1:12-cv-10815-FDS Document 15 Filed 11/05/12 Page 3 of 9
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`not simply copy from one user to another. As additional peers request the same exact file, they
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`become part of the same network, which is called a “swarm.” (Id.). Every member of the swarm
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`has the same version of the seed file on his or her computer and, when connected to the network,
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`is contributing a piece of that file to any peer who is then downloading the copyrighted material.
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`(Id.).
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`PPI alleges that the “Doe” defendants are all part of the same swarm, exchanging the
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`same file containing PPI’s copyrighted work. (Compl. ¶ 11; Pl. Resp. at 2). According to the
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`complaint, a device connected to each of the IP addresses identified in Exhibit A to the
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`complaint has downloaded a file containing the copyrighted work with “the same exact hash
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`mark (a 40-character hexadecimal string which through cryptographic methods clearly identifies
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`the [file], comparable to a forensic digital fingerprint).” (Compl. ¶ 11; Compl. Ex. A). At PPI’s
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`request, Copyright Enforcement Group, LLC (“CEG”) utilized its file-sharing forensic software
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`to obtain the IP addresses that were used by swarm members, that is, where the hash-marked file
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`was downloaded. (Compl. Ex. B ¶ 35). CEG further utilized geo-location software and tracking
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`data to determine that the IP addresses of the “Doe” defendants are likely within the relevant
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`geographic location of the Court. (Compl. ¶ 14).
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`PPI alleges that the “Doe” defendants in this case “engaged in a series of related
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`transactions, because they all downloaded the exact same file (not just the same copyrighted
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`work), within a limited period of time . . . and because in order to download a movie (or parts of
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`it), one must permit other users to download and/or upload the file from one’s own computer.”
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`(Compl. ¶ 13).
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`B.
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`Procedural Background
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`On May 4, 2012, PPI commenced this action against 20 unnamed “Doe” defendants. On
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`May 7, PPI filed an emergency motion for discovery seeking permission to serve Rule 45
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`subpoenas on ISPs of the listed IP addresses. The subpoenas were intended to obtain from the
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`ISP information sufficient to identify each defendant, including name, address (present and at the
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`time of infringement), e-mail address, and Media Access Control ("MAC") address. (Pl. Em.
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`Mot. ¶ 1). On May 7, Judge Zobel granted that motion. Since that date, a number of defendants
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`have apparently been identified, and some of them have filed separate motions to quash the
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`subpoena. In addition, some defendants have apparently settled with PPI.
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`On September 26, 2012, this Court issued an order directing PPI to show cause why the
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`Court should not sever all of the “Doe” defendants but one on the grounds that the infringement
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`claims do not arise out of the same transaction or occurrence as required for permissive joinder
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`under Fed. R. Civ. P. 20(a)(2).
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`II.
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`Analysis
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`A.
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`Permissive Joinder Under Rule 20(a)(2)
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`Pursuant to Fed. R. Civ. P. 20(a)(2), permissive joinder of defendants is proper if the
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`following two conditions are satisfied: “(A) any right to relief is asserted against them jointly,
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`severally, or in the alternative with respect to or arising out of the same transaction, occurrence,
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`or series of transactions or occurrences; and (B) any question of law or fact common to all
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`defendants will arise in the action.” There is no question that there exist at least some questions
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`of law or fact common to all defendants. The issue, therefore, is whether defendants’ alleged
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`downloading and uploading conduct arises out of the same “transaction or occurrence.”
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`Case 1:12-cv-10815-FDS Document 15 Filed 11/05/12 Page 5 of 9
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`There is not, as of yet, a clearly established rule in the First Circuit as to what constitutes
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`the same “transaction or occurrence” for purposes of joinder under Rule 20(a). In a recent
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`decision in this district, Judge Young applied the “logical relationship” test as articulated by the
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`Federal Circuit in In re EMC. That test deems individual claims to arise from the same
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`transaction or occurrence if the “infringing acts . . . share an aggregate of operative facts.” Id. at
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`1358. However, that test must be constrained by the established principle that joinder is not
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`proper simply because defendants allegedly “committed the exact same violation of the law in
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`exactly the same way.” New Sensations, Inc. v. Doe, 2012 U.S. Dist. LEXIS 142032 (N.D. Cal.
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`Oct. 1, 2012) (quoting Pac. Century Int'l Ltd. v. Does 1-101, 2011 U.S. Dist. LEXIS 73837, at *4
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`(N.D. Cal. Jul. 8, 2011)).
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`District courts dealing with the issue of joinder in the context of similar cases have issued
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`reasoned decisions on both sides. See Next Phase Distrib., Inc. v. Does 1-27, 2012 U.S. Dist.
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`LEXIS 107648, at *6-12 (S.D.N.Y. July 31, 2012) (describing in more detail the district court
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`split). Courts in this district have been generally disinclined to find joinder improper under the
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`application of Rule 20(a), but have nonetheless exercised their discretion to sever and dismiss
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`the claims. See, e.g., Third Degree Films v. Doe, 2012 U.S. Dist. LEXIS 142079 (D. Mass. Oct.
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`2, 2012) (“ground[ing] its determination to sever the Doe defendants in this action and like
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`actions on a basis squarely within the Court's expertise: fundamental fairness and justice to all
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`parties”). This Court will analyze the issue under both an objective Rule 20(a) “transaction or
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`occurrence” test and a discretionary “fundamental fairness” test.
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`Plaintiff contends that the nature of the BitTorrent swarm alone should be enough to meet
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`the “logical relationship” test. It further contends that every defendant understands how the
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`Case 1:12-cv-10815-FDS Document 15 Filed 11/05/12 Page 6 of 9
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`BitTorrent systems works, and, therefore, in order to keep it viable, he or she logs on to
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`redistribute copies of the movies he or she has downloaded. (Pl. Resp. 5). Courts in other
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`districts have rejected this very argument for a number of reasons. See, e.g., New Sensations,
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`Inc. v. Doe, 2012 U.S. Dist. LEXIS 142032, 20-21 (N.D. Cal. Oct. 1, 2012) (noting that “the
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`trend in [that] District has been to find joinder improper in P2P file sharing cases where the
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`alleged commonality is only that the defendants participated in the same swarm.”). These cases
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`aptly point out that when the alleged swarm is made up of hundreds, if not thousands, of
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`individuals, including many outside the district who are not part of the litigation, it is very
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`difficult to show that every “Doe” defendant joined uploaded to or downloaded from even one of
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`the other “Doe” defendants before the court. See Third Degree Films, 2012 U.S. Dist. LEXIS
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`142079 at *6-7 (acknowledging the “substantial merit” of this argument). Indeed, plaintiff
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`acknowledges this very real possibility and makes no effort to persuade the Court that it can
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`show otherwise. (Pl. Resp. at 5). When it cannot be shown that the joined defendants even
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`interacted with each other, the charges of similarity collapse into impermissible arguments that
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`defendants committed the same act in the same way. Plaintiff seems to acknowledge this,
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`admitting “(e)ven if there is not an actual exchange of files between initial participants of the
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`swarm and later participants, they all commit the same infringing activity.” Unfortunately for
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`plaintiff, the law does not permit joinder on this basis.
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`Even assuming that it can be demonstrated that each “Doe” defendant was online and
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`interacted with at least one other “Doe” defendant who is before the court, there are other factors
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`that demonstrate the dissimilarity of the operative facts as to each “Doe” defendant. As has
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`already played out in this and other similar cases on the Court’s docket, the “Doe” defendants
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`Case 1:12-cv-10815-FDS Document 15 Filed 11/05/12 Page 7 of 9
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`that have begun to raise defenses have done so individually, on the basis of specific,
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`particularized facts.2 The particular facts of each defense are central to the claim against that
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`particular Doe defendant; put another way, these are distinct operative facts. This is especially
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`true given the experience in many cases that have progressed further into discovery that the
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`account holder for a given IP address is not even the correct defendant (that is, not the computer
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`user).
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`For the above reasons, the Court finds that the plaintiff has not pleaded facts
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`demonstrating that “Doe” defendants’ infringing acts were part of the same “transaction or
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`occurrence” for the purposes of joinder under Rule 20(a). Therefore, the claims will be severed
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`and dismissed against all defendants except John Doe #1.
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`B.
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`Protective Measures Under Rule 20(b) and Discretion Under Rule 21
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`Pursuant to Fed. R. Civ. P. 20(b), the Court has broad discretion to “issue
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`orders—including an order for separate trials—to protect a party against embarrassment, delay,
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`expense , or other prejudice.” In addition, pursuant to Fed. R. Civ. P. 21, the Court has
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`discretion to “sever any claim against any party.”
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`As to these mass copyright infringement actions, some courts in this district have
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`exercised their discretion to sever in the interests of “justice and fundamental fairness.” See,
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`e.g., Third Degree Films, 2012 U.S. Dist. LEXIS 142079 at *7 n. 11. The Court notes that Judge
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`2 See, e.g., Motion of Nonparty to Quash or Vacate at 1 (asserting, among other specific defenses, that Doe
`#17 had his wireless internet hacked into without his knowledge or consent.). See also Third Degree Films, 2012
`U.S. Dist. LEXIS 142079 at *8 (“Comcast subscriber John Doe 1 could be an innocent parent whose internet access
`was abused by her minor child, while John Doe 2 might share a computer with a roommate who infringed Plaintiffs’
`works. John Does 3 through 203 could be thieves, just as Plaintiffs believe, inexcusably pilfering Plaintiffs' property
`and depriving them, and their artists, of the royalties they are rightly owed . . . . Wholesale litigation of these claims
`is inappropriate, at least with respect to a vast majority (if not all) of Defendants. Joinder is improper.”) (quoting
`BMG Music v. Does 1-203, 2004 U.S. Dist. LEXIS 8457 at *1 (E.D. Pa. Apr. 2, 2004)).
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`Young, who issued the opinion that initially found joinder proper and opened the floodgates to
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`these cases, has, “upon further reflection and a deeper understanding of the policy issues at
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`play,” exercised his discretion to sever the claims against the various defendants. Id. at *5.
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`Plaintiff nonetheless maintains that discretionary severance is not prudent here for
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`several reasons. First, plaintiff argues that the joinder of all “Doe” defendants in one action
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`promotes judicial economy. However, as described above, and as evidenced by the various
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`motions to quash by defendants who have been served, the Court would effectively have to
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`adjudicate this mass action through a series of mini-trials based on individualized factual
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`defenses. Furthermore, any efficiency gained in the early stages would be lost in the time it
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`would take the Court to sort through the later filings and proceed in a fair and rational fashion.
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`Second, plaintiff contends (citing one anomalous filing in a similar case) that some defendants
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`may not want to be severed. To the extent that this is a relevant consideration here, the Court
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`finds that severance is in the best interest of the substantial majority of present (and future)
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`defendants in these actions. Third, plaintiff contends that the Court should not presume bad faith
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`on the part of plaintiff or its counsel in commencing this litigation or in attempts to settle with
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`individual “Doe” defendants. Although the Court notes that the tactics of counsel have been
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`criticized in other cases, the Court makes no finding that such bad faith has been exercised here,
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`and so does not consider this factor.3 Finally, plaintiff contends that “piracy wins” if the Court
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`severs the defendants. Undoubtedly, the Internet, particularly high-speed peer-to-peer file
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`sharing, presents new challenges for the copyright laws. However, this Court is not persuaded
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`3 See Third Degree Films, 2012 U.S. Dist. LEXIS 142079 at *1-4, *33-34 (describing the extortionate
`litigation as a “new business model” and providing more detail as to precise tactics, including examples from recent
`cases).
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`Case 1:12-cv-10815-FDS Document 15 Filed 11/05/12 Page 9 of 9
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`that plaintiff will have no legal or technological protection whatsoever from infringement should
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`the Court exercise its discretion and sever the defendants.
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`Accordingly, the Court finds that the interests of justice and judicial economy would best
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`be served if this matter were dismissed as to all defendants but one, without prejudice to the
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`refiling of individual claims against each defendant.
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`III.
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`Conclusion
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`For the foregoing reasons, the claims against all of the “Doe” defendants are severed and
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`all claims, except those against “Doe #1,” are hereby DISMISSED without prejudice.
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`So Ordered.
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`Dated: November 5, 2012
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`/s/ F. Dennis Saylor
`F. Dennis Saylor IV
`United States District Judge
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