JOSEPH C. SPERO, United States Magistrate Judge.
On February 8, 2013, Signature Management Team, LLC ("TEAM") submitted a proposed subpoena pursuant to the Digital Millennium Copyright Act of 1998 ("DMCA"). The proposed subpoena was directed to Automattic, Inc. ("Automattic"), the provider of the systems and network in which "Amthrax," the alleged infringer, posted a copyrighted work. The subpoena was issued on February 11, 2013. Presently before the Court is Amthrax's Motion to Quash Subpoena ("Motion").
The standard for judicial notice is set forth in Rule 201 of the Federal Rules of Evidence, which allows a court to take judicial notice of an adjudicative fact not subject to "reasonable dispute," either because it is "generally known within the territorial jurisdiction of the trial court" or it is "capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned." Fed.R.Evid. 201.
Amthrax seeks judicial notice of twenty-three documents, including seven news articles, nine Amthrax blog posts, two Amthrax-Amway blog posts, one court filing, one posting on the blog of Orrin Woodward, the "about us" section of the LIFE website, an advertisement for the Team Builder's Textbook, and an advertisement for an old edition of the Team Builder's Textbook. Amthrax's Request for Judicial Notice ("RJN"), Ex. A-V, X. Amthrax clarifies that he does not seek judicial notice of the facts contained in the publications referenced, but rather seeks judicial notice that the publications were made to provide context for his speech at issue in this case. Reply in Support of Motion to Quash ("Reply"), 7 n. 7.
Amthrax also seeks judicial notice of the fact that the 2009 version of the Team Builder's Textbook is available for free download at http://technovatetranslations.com/samples/sample-sp-02-original.pdf. The Court denies judicial notice of this asserted fact because it cannot be verified.
TEAM submitted a "Cover Letter," a "DMCA Notification," and a proposed subpoena to the court on February 8, 2013. Dkt. Nos. 1-2. In the Cover Letter, Rod Divelbiss ("Divelbiss"), TEAM's counsel, stated that TEAM was submitting three items in support of its request for a DMCA subpoena: (1) The DMCA Notification; (2) a proposed subpoena directed to Automattic; and (3) a sworn declaration, contained within the cover letter, that the purpose for which the subpoena is sought is proper under the DMCA. Dkt. No. 1.
The proposed subpoena demanded production of "1) the identity and address of the person/entity posting the work entitled, The Team Builder's Textbook' at http://amthrax.files.wordpress.com.2013/01/sample-sp-02-original.pdf, and 2) the identity and address of the owner/operator of the Amthrax blog hosted on the Wordpress website." Dkt. No. 2. The stated deadline for production was: "Expeditiously, but not later than 02/15/2013." Id.
The DMCA Notification identified: (1) the copyrighted work — the Fourth Edition of the Team Builder's Textbook; (2) the infringing material — a verbatim copy of the copyrighted work posted on Automattic's system or network; (3) the URL of the posting of the infringing material — http://amthrax.files.wordpress.com.2013/01/sample-sp-02-original.pdf; (4) the copyright owner's — TEAM's — contact information; (5) the copyright infringer's information — the operator, referred to only as Amthrax, of a blog on Automattic's system identified as http://amthrax.wordpress.com/. Id. The DMCA Notification also stated that the posting was without authorization. Id.
The supporting declaration reads: "I declare under penalty of perjury that to my knowledge the purpose for which the subpoena is sought is to obtain the identity of an alleged infringer and that such information will only be used for the purpose of protecting rights under title 17 USC § 100, et seq." Id.
TEAM's subpoena is based Amthrax's posting of a copy of its purportedly copyrighted textbook on his blog. Declaration of Rob Hallstrand in Support of Opposition ("Hallstrand Declaration"), ¶ 5; Declaration of Rod Divelbiss in Support of Opposition ("Divelbiss Declaration"), ¶ 2, Ex. A (cover of the Fourth Edition of the "Team Builder's Textbook" that indicates that it was copyrighted by Obstacles Press, Inc., a trademark of TEAM Partnerships,
Amthrax argues that he has standing to seek to quash a subpoena that seeks information
Addressing the DMCA, Amthrax argues that the statute is designed to provide safe harbor for internet service providers by allowing the alleged infringer to step in and defend the alleged infringement. Id. at 16. Amthrax asserts that the purpose of the DMCA subpoena is not to confer the absolute right to learn an alleged infringer's identity, but to enable a copyright claimant to bring suit. Id. at 17. Amthrax contends that the statutory purpose is satisfied because he has offered to accept service through his counsel and defend any copyright action anonymously. Id. Amthrax also argues that the DMCA subpoena in this case is being used as a pretext to pursue other claims, noting that the declaration offered in support of the subpoena was noncompliant with the statutory mandate as it only indicated that the information obtained would not be used for other purposes to Divelbiss' knowledge. Id. at 17-18. In addition, Amthrax implies that, because he removed the infringing document prior to receiving a take-down notice, the DMCA may no longer be used to identify him because he is a past infringer. Id. at 17.
In Opposition, TEAM asserts that the sole and dispositive issue is whether the DMCA subpoena was issued in compliance with the DMCA. Opposition to Motion to Quash ("Opposition"), 13. It argues that it is entitled to learn Amthrax's identity now because the DMCA subpoena was properly issued in compliance with the statutory requirements. Id. at 6-8. TEAM contends that First Amendment defenses do not apply to DMCA subpoenas, but only to subpoenas issued pursuant to Federal Rule of Civil Procedure 45. Id. at 7, 9 (citing 17 U.S.C. § 512(h)(6)). Moreover, TEAM asserts that Congress already weighed whatever First Amendment rights would be impinged by the DMCA, and warns against the imposing on Congress' judgment in balancing First Amendment with Article I, § 8 of the Constitution. Id. at 5-6 (citing Eldred v. Ashcroft, 537 U.S. 186, 208, 212, 123 S.Ct. 769, 154 L.Ed.2d 683 (2003)). In addition, TEAM argues
Amthrax argues that he may raise First Amendment objections by way of motion to quash. Reply in Support of Motion to Quash ("Reply"), 2-6. Moreover, Amthrax asserts that the only authority TEAM cites for the constitutionality of the DMCA, Verizon, involved only the constitutionality of allowing the copyright claimant to request the court clerk to issue a subpoena. Id. at 3 (citing Verizon, 257 F.Supp.2d at 248). In addition, Amthrax contends that Verizon rested its conclusion that the request process was constitutional on the premise that the person who was the subject of the subpoena would be able to object to, modify, or move to quash the subpoena pursuant to Rule 45 in order to raise issues of privilege. Id. at 3-4 (citing Verizon, 257 F.Supp.2d at 263-64).
The DMCA provision governing issuance of a subpoena to identify an infringer is 17 U.S.C. § 512(h). That section provides, in part, as follows:
Fed.R.Civ.P. 45(c)(3)(A).
As is clear from the title of § 512(h) — "[s]ubpoena to identify infringer" — the purpose of a DMCA subpoena is to identify a copyright infringer. TEAM argues that Rule 45 does not apply to a motion to quash a DMCA subpoena because § 512(h)(6) incorporates only "the procedure for issuance and delivery of the subpoena, and the remedies for noncompliance with the subpoena." Relying on this premise, TEAM contends that the First Amendment cannot provide a basis for quashing a DMCA subpoena.
The text of § 512(h)(6), while not a model of clarity, anticipates that issues such as the First Amendment Privilege asserted here can be raised in opposition to a DMCA subpoena. The statute incorporates, to the greatest extent practicable, the Federal Rules of Civil procedure governing the issuance, service, and enforcement of the subpoena duces tecum. Rule 45 provides for a motion to compel, and also for contempt for noncompliance, but only where a party, "having been served, fails without adequate excuse to obey a subpoena." Fed.R.Civ.P. 45(c)(2)(B), (e). Rule 45 itself, in its enforcement provisions, clearly anticipates the assertion of defenses to production. These provisions
Any other interpretation makes no sense. The argument that a motion to quash is barred because only the "enforcement" provisions of Rule 45 are incorporated (in addition to issuance and service) must be rejected. That reading of the statute would allow a subpoenaed party to raise its objections in a contempt proceeding — and risk sanctions — but not in advance of production deadlines in a motion to quash. The Court declines to give the statute such a strained reading.
More importantly, the broad reference to "other provision[s] of law" in § 512(h)(5) cannot be read to authorize enforcement of a DMCA subpoena in violation of the First Amendment. TEAM relies on Congress' broad authority to determine intellectual property regimes that, in that body's judgment, serve the ends of the Copyright Clause. See Eldred, 537 U.S. at 221, 123 S.Ct. 769. Congress is without power to expressly violate the First Amendment. Indeed, in Eldred the Court noted that the fair use doctrine and the challenged statutory scheme adequately addressed the First Amendment concerns at issue. Id. at 219-21, 123 S.Ct. 769. At minimum, TEAM's interpretation raises grave doubts as to the constitutionality of the DMCA subpoena provision. On the other hand, § 512(h) can be read to allow the recipient of the subpoena to challenge its validity in a motion to quash. Indeed, in every instance in which a party has sought to quash a DMCA subpoena, the courts have discussed the merits of the motion to quash without casting any doubt on the validity of the procedure. See Maximized Living, Inc. v. Google, Inc., 2011 WL 6749017, *6 (N.D.Cal.Dec. 22, 2011) (granting a motion to quash for noncompliance with the notification requirement; failing to reach constitutional objections having granted the motion on nonconstitutional grounds); Verizon, 257 F.Supp.2d at 248-68, 275 (denying a motion to quash a DMCA subpoena after considering constitutional challenges to the DMCA raised under Article III and the First Amendment; stating in dicta that First Amendment objections to a DMCA subpoena could be raised by a motion to quash pursuant to Rule 45); Recording Industry, 351 F.3d at 1230 (reversing Verizon, granting a motion to quash for noncompliance with the notification requirement; failing to reach the constitutional objections having granted the motion on nonconstitutional grounds); In re Subpoena Issued Pursuant to the Digital Millennium Copyright Act to: 43SB.Com, LLC, 2007 WL 4335441, *4 (D.Idaho Dec. 7, 2007) (denying motion to quash where all requirements for issuance of a subpoena had been satisfied; granting motion to quash where there was no nexus between the identity sought and the alleged infringement). The Court declines to read the broad statutory language in such a way as to render the statute unconstitutional. See Public Citizen v. U.S. Dept. of Justice, 491 U.S. 440, 465-66, 109 S.Ct. 2558, 105 L.Ed.2d 377 (1989) ("When the validity of an act of the Congress is drawn in question, and even if a serious doubt of constitutionality is raised, it is a cardinal principal that this Court will first ascertain whether a construction of the statute is fairly possible by which the question may be avoided"). Rather, in accordance with the practice of courts applying the DMCA, the Court concludes that constitutional objections to a DMCA subpoena may properly be raised in a motion to quash.
The First Amendment protects the right to anonymous speech. See McIntyre, 514 U.S. at 342, 115 S.Ct. 1511 ("An author's decision to remain anonymous,
The right to anonymous speech is not absolute. Id. at 1173, 1177-78 (finding no clear error where the district court where the district court required the disclosure, subject to a protective order, of the identity of individuals alleged to have tortuously interfered with plaintiff' s contracts by posting anonymous messages on internet blogs; noting that a protective order is one of the tools available to the district court to oversee discovery of sensitive matters that implicate First Amendment rights). The degree of scrutiny varies depending on the circumstances and the type of speech at issue. Id. at 1173. Several district courts have addressed the question of whether a putative copyright holder may seek disclosure of an anonymous speaker that is alleged to have infringed on the copyright. See Art of Living, 2011 WL 5444622, at *3-*10; Sony Music Entertainment Inc. v. Does 1-40, 326 F.Supp.2d 556, 563-67 (S.D.N.Y. 2004); Verizon, 257 F.Supp.2d at 258-68. In each decision, the court began by considering the nature of the speech before determining the appropriate standard to apply. See Anonymous Online Speakers, 661 F.3d at 1177 ("we suggest that the nature of the speech should be a driving force in choosing a standard by which to balance the rights of anonymous speakers in discovery disputes.... The specific circumstances surrounding the speech serve to give context to the balancing exercise).
Both Sony and Verizon involved peer-to-peer file copying networks used to download, distribute, or make available for distribution copyrighted material. See Sony, 326 F.Supp.2d at 564; Verizon, 257 F.Supp.2d at 247. In Sony, the court concluded that the "conduct qualifie[d] as speech, but only to a degree" and thus deserved only protection that "is limited, and subject to other considerations." Sony, 326 F.Supp.2d at 564. In Verizon, considering a facial challenge to the DMCA, the court reasoned from the premise that the DMCA does not directly impact core political speech. Verizon, 257 F.Supp.2d at 260. The Verizon court proceeded to state that the First Amendment does not shield copyright infringement. Id. Nevertheless, the court concluded that "there is some level of First Amendment protection that should be afforded to anonymous expression on the Internet, even though the degree of protection is minimal where alleged copyright infringement is the expression at issue." Id.
In Sony, having determined that the purported infringers had some protected First Amendment interest in their anonymity, the court balanced five factors to determine whether the need for disclosure outweighed their First Amendment interests. Sony, 326 F.Supp.2d at 564-66. First, the court determined that the plaintiffs had made a concrete showing of a prima facie case of copyright infringement. Id. at 565-66. Second, the court found that the discovery request was sufficiently specific to lead to identifying information of particular defendants to enable the
In Verizon, based on its characterization of the speech addressed by the DMCA, the court concluded that the DMCA does not violate the First Amendment. Verizon, 257 F.Supp.2d at 260-68. First, the Verizon court rejected the notion that the DMCA required "built-in safeguards" or judicial review because "[t]he DMCA places no limits on protected activity; it governs unprotected copyright piracy, and § 512(h) reaches only the identity of the subscriber (already known to the service provider), not any underlying expression. Moreover, the content of § 512(h) is ... copyright legislation, where `the wisdom of Congress' action ... is not within [the Court's] province to second guess.'" Id. at 262 (quoting Eldred, 123 S.Ct. at 790). Even if additional safeguards were required, the court concluded that the DMCA requirements for seeking a subpoena and incorporation of the Federal Rules to provide access to judicial supervision by way of motions to quash the subpoena provided sufficient safeguards for Internet users' First Amendment rights. Id. at 262-63. Second, addressing the argument that the DMCA is overbroad, the court acknowledged that the threat of a subpoena under the DMCA and the resulting identity disclosure could discourage some Internet users from otherwise protected activity. Id. at 264. However, there was no evidence of the use of a DMCA subpoena to identify anyone aside from alleged copyright infringers. Id. The court declined to apply the "strong medicine" of the overbreadth doctrine absent a showing that the the subpoena authority granted by the DMCA "is so overbroad that it sweeps a substantial amount of protected expression within the [its] provisions." Id. at 266.
On the other hand, Art of Living involved pseudonymous posting of the "Breathe Water Sound Manual" which was allegedly copyrighted by the plaintiff. Art of Living, 2011 WL 5444622, at *1. The posting was made on a blog under the pseudonym Skywalker as part of Skywalker's larger campaign to "debunk the notion that Ravi Shankar is an enlightened being in possession of mystical `secret knowledge.'" Id. The plaintiff, Art of Living Foundation, was an international organization with chapters in over 140 countries teaching the spiritual lessons of "His Holiness Ravi Shankar." Id. The court concluded that Skywalker's condemnation of the large Art of Living Foundation touched on a matter of public interest. Id. at *6. Even though Skywalker appeared to have published protected materials, given the context Skywalker's speech "at least raise[d] significant constitutional issues," even if it was not political or religious speech entitled to the greatest First Amendment protection. Id.
In light of the significant constitutional issues, the Art of Living court declined to apply the Sony test. Instead, the court applied the test developed in Highfields, a case that did not involve a copyright claim. Id. at *7. The court reasoned that the Highfields test was consistent with Ninth Circuit precedent regarding the potential impact of a discovery request on chilling
Applying the second step, the Art of Living court held that "to the extent that Skywalker's anonymity facilitates free speech, the disclosure of his identity is itself irreparable harm." Id. at *9. The court noted that the use of a pseudonym may enable Skywalker to garner a larger audience and thereby facilitate the free exchange of ideas. Id. The court further noted that the revelation of an anonymous speaker's identity may invite retaliation from those who oppose her ideas or from those whom she criticizes. Id. Skywalker submitted a declaration expressing his concern that the adherents of Ravi Shankar would harass or retaliate against him or his family if his identity would be disclosed. Id. Although the court did not find Skywalker's evidence particularly reliable, it found the reasonable inference self-evident that unveiling Skywalker's identity would subject him to harm and chill others from engaging in protected speech. Id. The court found no similar harm to the Art of Living Foundation should Skywalker remain anonymous, noting that Skywalker had been engaged in the litigation and responsive to discovery requests. Id. at *10. The court noted that Skywalker's identity may later need to be revealed to facilitate a deposition or to enforce any judgment obtained against him. Id. Even so, the court quashed the subpoena seeking Skywalker's identity and stayed further discovery on that subject. Id.
Under either test identified by Amthrax, the First Amendment does not preclude disclosure of his identifying information pursuant to a DMCA subpoena.
Both Art of Living and Sony began by considering the nature of the speech in question. Here, as in Art of Living and unlike Sony, the alleged infringement involved the anonymous online posting of copyrighted material in the context of a critical campaign against the institution holding the copyright. Amthrax's criticism of TEAM and multi-level management schemes involves a matter of public concern. Against this backdrop, as in Art of Living, there is a substantial question as to whether the doctrine of fair use would apply in this case.
The Art of Living analysis involves (1) evaluating whether the party seeking the information has demonstrated a prima facie case of copyright infringement and (2) a balancing of harms. See Art of Living, 2011 WL 5444622, at *7. To establish a prima facie case of copyright infringement, a party must show (1) ownership of a valid copyright and (2) violation by the alleged infringer of at least one of the exclusive rights granted to copyright owners by the Copyright Act. See 17 U.S.C. § 501(a); UMG Recordings, Inc. v. Augusto, 628 F.3d 1175, 1178 (9th Cir. 2011). As courts have noted, the DMCA essentially requires the party seeking a subpoena to plead a prima facie case of copyright infringement for a subpoena to issue. See 43SB.Com, 2007 WL 4335441, at *4 (citing Verizon, 257 F.Supp.2d at 263). TEAM properly did so here. See Dkt. No. 1 (DMCA Notification). In addition, TEAM has submitted evidence to support its copyright claim. Divelbiss Declaration, Ex. A. Amthrax does not dispute posting a copy of the copyrighted work on his blog. Amthrax Declaration, ¶ 4. Accordingly, TEAM has demonstrated a prima facie case of copyright infringement.
Balancing the harms, the potential harm to Amthrax from discovery of his identity in compliance with the DMCA does not outweigh the potential harm to TEAM if Amthrax's Motion is granted. Amthrax identifies a number of potential harms if his identity is disclosed to TEAM. He is concerned that TEAM will retaliate against him for his critical speech, either by bringing a defamation suit or through some other means. Amthrax points out that such retaliatory action could chill the speech of other anonymous critics, who will fear retaliation if they continue to express their beliefs. However, Amthrax states that he is willing to accept service on any copyright claim through his counsel and anonymously defend this action.
It is apparent that Amthrax's First Amendment concerns are predicated on his underlying fear that TEAM will misuse the DMCA process. The DMCA subpoena is to be used solely for the purposes of protecting the serving party's rights in its copyright. See 17 U.S.C. § 512(h)(2)(C). Provided TEAM properly uses Amthrax's identifying information obtained using the DMCA subpoena, and does not disseminate his identity or take any retaliatory action, Amthrax will suffer only minimal harm if his Motion is denied.
On the other hand, TEAM has an interest in obtaining Amthrax's identity to facilitate a copyright infringement action against Amthrax. This is true regardless of his offer to accept service through his attorney, as personal service will facilitate discovery, including a potential pre-trial deposition, and prevent TEAM from being forced to rely on Amthrax's good faith engagement in the litigation to move forward. See Art of Living, 2011 WL 5444622, at *10. The minimal potential harm to Amthrax of disclosure of his identifying
In Sony, the court employed a five factor test weighing (1) whether the party seeking discovery made a prima facie claim of copyright infringement; (2) the specificity of the discovery request; (3) the absence of alternative means to obtain the subpoenaed information; (4) the central need for subpoenaed information; and (5) the expectation of privacy for the party opposing discovery. Sony, 326 F.Supp.2d at 565-67.
First, as discussed above, TEAM has made prima facie showing of copyright infringement. Second, the discovery requests seek only the identity and address of the person or entity that posted the purported infringing work and the identity and address of the owner or operator of the Amthrax blog. Given that the infringing work appeared to be posted by the operator of the blog, this request specifically sought only identifying information of the alleged infringer.
Third, unlike in Sony, TEAM has not made any showing that there is an absence of alternative means to obtain the subpoenaed information. See Sony, 326 F.Supp.2d at 566. For example, TEAM has not outlined any other steps it has taken to obtain Amthrax's identity. See id. Moreover, TEAM has not argued that it will be unable to obtain Amthrax's identity through other means.
Fourth, the need for the subpoenaed information is less central here than in Sony. Unlike Sony, Amthrax has offered to accept service and defend TEAM's potential copyright claim through his attorney. Therefore, TEAM will not be unable to serve process. See id. Even so, as discussed above, TEAM has an interest in learning Amthrax's identity to facilitate litigation and discovery in defense of its copyright.
Fifth, although Amthrax has a substantial expectation of privacy for his anonymous criticism of TEAM and its business model, there is no similar expectation of privacy for copyright infringement. As discussed above, Amthrax's speech, copying TEAM's work, raises significant First Amendment questions in light of his potential fair use defense. Nevertheless, the DMCA subpoena need only minimally interfere with his privacy interest, as Amthrax's identifying information obtained using that subpoena may only be in vindicating TEAM's rights under its copyright. During any copyright action, Amthrax will be able to raise his fair use defense.
Combined, the factors tip in favor of allowing TEAM to obtain Amthrax's identifying information. TEAM has made a prima facie showing of copyright infringement, and the DMCA will adequately protect Amthrax's First Amendment interest. The information may only be used for asserting TEAM's rights under its copyright, and Amthrax will be able to raise his fair use defense in those proceedings.
There is also a dispute between Automattic and TEAM related to this action. Supplemental Declaration of Kristi Vera-Martinez, Ex. A. Automattic stated that it would waive any and all objections and promptly provide the requested information to TEAM if Amthrax's Motion to Quash is denied. Id. at Ex. A at 5. In accordance with this Order denying Amthrax's Motion to Quash, Automattic shall provide the requested identifying information to TEAM.
For the foregoing reasons, Amthrax's Motion to Quash is DENIED. As stated
IT IS SO ORDERED.
