Category Archives: Discovery

D.C. Court of Appeals adopts test from Cahill for enforcing a subpoena seeking identity of anonymous defendant

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Shourin Sen - 17 August 2009 – 9:00 am
Filed under Discovery, First Amendment

Solers, Inc. v. Doe, 2009 WL 2460862 (D.C. 2009)

There was a fascinating decision out of the D.C. Court of Appeals this past week. The D.C. Court of Appeals is the equivalent of a state supreme court, not to be confused with the U.S. Court of Appeals for the D.C. Circuit.

The Software & Information Industry Association was a trade organization with an anti-piracy division. One of the enforcement programs offered a “piracy hotline” through which sources could anonymously report infringing activities via the internet or by a phone call. The SIAA received an anonymous internet tip that a software company was conducting infringing activities. The SIAA sent out a letter demanding that the software company, whose principal business was designing programs for the Department of Defense,  conduct an internal audit, deliver the results of the audit to the SIAA, or risk litigation for copyright infringement. The defense industry software company completed an audit, found no infringement, and reported the results to the SIAA, which closed its file.

The defense industry software company was angered by the allegation, and filed suit against John Doe (the SIAA was not a party in the proceedings) alleging defamation and tortious interference with prospective advantageous business opportunities. The defense industry company issued a subpoena to the SIAA seeking production of the documents relating to the tip, and the identity of Doe. The SIAA moved to quash, which was granted by the Superior Court.

The software company requested that the Superior Court dismiss its complaint with prejudice so that there would be a decision on the merits, allowing the company to appeal the order quashing the subpoena. The Superior Court obliged finding that the defense industry software company had failed to allege sufficient facts that it had suffered harm and had failed to exhaust alternative methods for obtaining Doe’s identity.

The standard for enforcing a subpoena which seeks to identify an anonymous defendant

This issue of when it’s consistent with the First Amendment to force a third party to reveal the identity of a defendant charged with defamation was an issue of first impression in the District of Columbia. The Court of Appeals looked to the standard articulated in Doe v. Cahill, 884 A.2d 451, 456 (Del.2005):

When presented with a motion to quash (or to enforce) a subpoena which seeks the identity of an anonymous defendant, the court should:

  • (1) ensure that  the plaintiff has adequately pleaded the elements of the defamation claim,
  • (2) require reasonable efforts to notify the anonymous defendant that the complaint has been filed and the subpoena has been served,
  • (3) delay further action for a reasonable time to allow the defendant an opportunity to file a motion to quash,
  • (4) require the plaintiff to proffer evidence creating a genuine issue of material fact on each element of the claim that is within its control, and
  • (5) determine that the information sought is important to enable the plaintiff to proceed with his lawsuit.

We do not require a separate balancing test at the end of the analysis, nor do we require a showing that the plaintiff has exhausted alternative sources for learning the information.

There was a paragraph on the policy outlines of the case that was particularly interesting:

SIIA protests that enforcement of subpoenas like this one will have a chilling effect on reporting of software piracy: “Because few would-be Internet communicators seeking to report potential software piracy would risk the financial and other burdens of defending a lawsuit, that speech likely would disappear.” This forecast includes hyperbole, no doubt, but the test we have adopted takes this concern into account. As the previous discussion should make clear, we do not take lightly a person’s decision to speak anonymously. But that is not an absolute right, and SIIA’s website alerted John Doe that SIIA might be required to disclose his identity. We do not question the importance of combating software piracy, but that is only one of the interests we must balance.

The Court of Appeals vacated the judgment of the Superior Court so that the defense industry software company would have the opportunity to present evidence supporting its defamation claim under the revised standard.

Court grants protective order against further discovery of past conduct in Cambridge University Press v. Becker

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Shourin Sen - 7 July 2009 – 9:00 am
Filed under Discovery, Sovereign Immunity

Cambridge University Press v. Becker, 08-CV-1425-ODE (N.D. Ga. 2009)

There was an update last week in Cabridge University Press v. Becker, a case that is to my knowledge the first large-scale infringement suit brought against an institution of higher education.  A group of publishers alleged that Georgia State University facilitated the infringing online distribution of their works.

The plaintiffs made the tactical decision to only seek an injunction and declaratory judgment, not damages.  As a state institution, the publishers are likely barred from seeking money damages against the employees due to sovereign immunity, conferred by the Eleventh Amendment.  We discussed this topic a couple of months ago in Frank Romero v. California Department of Transportation, 2009 WL 650629 (C.D. Cal. 2009) (unpublished). Following the filing of the complaint, Georgia State University adopted a new copyright policy that its counsel argued has rendered moot any claims based on its past-conduct.

At bar, Georgia State University sought a protective order that future discovery should be limited to its “ongoing and continuous conduct.” Plaintiffs argued that further discovery of past practices was releveant because it needed to show infringement to be awarded an injunction, and because it thought that the new copyright policy was inadequate.

Judge Evans granted the Defendant a protective order, finding that the Plaintiffs had conducted sufficient discovery to present evidence of past infringement.

Additional discovery in to these past practices, at this point would be unduly burdensome.  Even if the new copyright policy fails to address the alleged problems in the old policy, Plaintiffs will have had sufficient discovery to argue that there is no significant difference between the two.