The opinion of the court was delivered by: Legrome D. Davis, J.
AND NOW, this 30th day of December, 2011, upon consideration of Plaintiff's Motion for Leave to Serve Third Party Subpoenas Prior to a Rule 26(f) Conference (Doc. No. 4), it is hereby ORDERED that said Motion (Doc. No. 4) is DENIED.
I. Factual Background and Procedural History
In this internet copyright infringement action, Plaintiff Patrick Collins, Inc. ("Plaintiff" or "Collins") claims that twenty-six (26) John Doe Defendants used the BitTorrent protocol to infringe Collins' copyrighted work, namely a movie titled "Asa Akira is Insatiable 2." (Doc. No. 1 ¶¶ 1-12). By way of background, BitTorrent is a common peer-to-peer (P2P) file sharing protocol that allows users to distribute large amounts of data over the internet. (Doc. No. 1 ¶ 13). To share files using BitTorrent, a user installs a BitTorrent "Client" (software program) onto his computer, and this Client serves as the user's interface during the process of uploading and downloading data. (Doc. No. 1 ¶¶ 15-17). A user may then upload a new file, e.g., a movie, called an "initial seed," which the Client breaks down into individual "pieces." (Doc. No. 1 ¶¶ 18-20). The BitTorrent protocol allows many users to join a "swarm" of host computers to upload and download different "pieces" of the initial seed file from each other. (Doc. No. 1 ¶ 14). At the end of the process, once a user has downloaded all the pieces of the file, the Client reassembles the pieces into a complete file so the user can, e.g., watch the downloaded movie. (Doc. No. 1 ¶ 34).
Here, Collins hired a forensic investigator to identify the IP addresses associated with BitTorrent file sharing of Collins' original work of authorship, i.e., "Asa Akira is Insatiable 2." (Doc. No. 1 ¶¶ 35, 45). Utilizing forensic software, the investigator determined that twenty-six (26) users, the John Doe Defendants in this matter, copied the same piece*fn1 of Collins' work using the BitTorrent protocol. (Doc. No. 1 ¶¶ 38). In other words, each Defendant allegedly participated in the same BitTorrent swarm to obtain a copy of Collins' movie, or at least a portion of it. (Doc. No. 1 ¶¶ 32, 39). Collins did not authorize or consent to Defendants' copying of the work. (Doc. No. 1 ¶ 46). Collins' complaint asserts that Defendants' aforementioned conduct constitutes direct copyright infringement (Count 1), contributory copyright infringement (Count 2), direct trademark infringement (Count 3), and contributory trademark infringement (Count 4).
In the motion presently before us, Plaintiff asks us to authorize Rule 45 subpoenas commanding each John Doe Defendant's internet service provider ("ISP"), here, Verizon Internet Services, Comcast Cable, and RCN Corporation, to provide Plaintiff with the true name, address, telephone number, e-mail address, and Media Access Control ("MAC") address*fn2 of the individuals associated with the IP addresses identified by Plaintiff's forensic investigator. (Doc. No. 4). As discussed in detail below, we deny Plaintiff's motion because Plaintiff has not yet registered his copyright for "Asa Akira is Insatiable 2," which is a prerequisite for bringing this copyright infringement suit. See 17 U.S.C. § 411(a).
As a general rule, a party may not seek discovery in advance of a Rule 26(f) conference without a court order. See Fed. R. Civ. P. 26(d)(1). Rule 26(b) guides our discretion in determining whether to issue such a discovery order. Specifically, a court "may order discovery of any matter relevant to the subject matter involved in the action" for "good cause." Fed. R. Civ. P. 26(b)(1).
As set forth supra, this is an internet copyright infringement case in which Plaintiff seeks leave to subpoena John Doe Defendants' ISPs to ascertain the true identities of the alleged infringers. In cases such as this, courts typically consider "a variety of factors to weigh the need for disclosure against First Amendment interests. These factors include: (1) a concrete showing of a prima facie claim of actionable harm, (2) specificity of the discovery request, (3) the absence of alternative means to obtain the subpoenaed information, (4) a central need for the subpoenaed information to advance the claim, and (5) the party's expectation of privacy." Sony Music Entm't Inc. v. Does 1-40, 326 F. Supp. 2d 556, 564-65 (S.D.N.Y. 2004) (internal citations omitted). Stated differently, no "good cause" exists to subpoena an ISP's records for a subscriber's sensitive personal information (name, address, phone number, e-mail address, and MAC address) unless the moving party persuasively establishes, among other things, a prima facie claim of actionable harm, e.g., copyright infringement.
This rule makes good sense, both as a matter of policy and constitutional law. If a copyright infringement plaintiff cannot even make a prima facie showing of actionable harm by the defendants, then we see no good reason to force an ISP to turn over the defendants' identities. Such a rule serves a screening function of sorts, ensuring that courts (and litigants) give due deference to an individual's First Amendment right to disseminate information anonymously, see McIntyre v. Ohio Elections Comm'n, 514 U.S. 334, 342 (1995) (holding that the First Amendment protects an author's decision to remain anonymous), and constitutional right to privacy, see Whalen v. Roe, 429 U.S. 589, 598-600 (1977) (noting that right to privacy encompasses "the individual interest in avoiding disclosure of personal matters."). Although not absolute, these rights should not give way without a compelling reason.
Here, Plaintiff's complaint does not allege a viable copyright infringement claim properly before the Court because the work in question, "Asa Akira is Insatiable 2," has not yet been registered with the United States Copyright Office. Under 17 U.S.C. § 411(a), absent certain circumstances not applicable here,*fn3 one cannot bring a copyright infringement action until the copyright is registered. It follows that "a party may not state a prima facie case of copyright infringement where the party does not hold a registered copyright in accordance with 17 U.S.C. § 411(a)." Telebrands Corp. v. Exceptional Prods. Inc., No. 11--CV--2252, 2011 WL 6029402, at *3 (D.N.J. Dec. 5, 2011) (citation omitted).
As Plaintiff's complaint makes clear, Collins has filed an application for copyright registration for the work at issue, but the application is still pending. (Doc. No. 1 ¶¶ 11, 12, 45 ("Plaintiff is the owner of the application for the Work, which will ripen into a registration, which contains an original work of authorship.")). In other words, the Copyright Office has neither registered nor refused to register Collins' work. Our independent research of Copyright Office records confirms that the work is not yet registered.*fn4 Therefore, Plaintiff has not met § 411(a)'s registration requirement, and so has not concretely stated a prima facie claim of copyright infringement. See Telebrands, 2011 WL 6029402, at *3. As such, we see no good cause to permit Plaintiff to subpoena twenty-six (26) John Doe Defendants' ISPs to compel the ISPs to reveal the Defendants' identifying personal information.
We recognize that courts have split over the interpretation of § 411(a), with some endorsing an "application" approach in which a copyright infringement plaintiff may rely on his pending copyright application to bring suit, while others take the "registration" approach we delineated above, in which the Copyright Office's issuance of a certificate of registration is a prerequisite to suit. See Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612, 615-16 (9th Cir. 2010) (cataloging cases and noting circuit split). Indeed, two leading copyright law treatises take opposite sides of this debate. Compare 2-7 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 7.16 (2011) (favoring application approach) with 1 Howard B. Abrams, The Law of Copyright § 10:8.90 (2011) (favoring registration approach). Although the Third Circuit has not definitively resolved the "application" v. "registration" question, the court recently declared that "[a]n action for infringement of a copyright ...