Use and Abuse of Joinder in Copyright Infringement Actions

By Michael Hart1

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In recent years federal district courts have been inundated with a new kind of civil plaintiff known as the “copyright troll.”2 A plaintiff will file a claim seeking “damages for infringement upon a copyright it owns, not to be made whole, but rather as a primary or supplemental revenue stream.”3 Typically, these plaintiffs file a single complaint joining “tens, hundreds or thousands of individuals based on their IP addresses” for sharing a protected file across a peer-to-peer (P2P) 4 network.5 Plaintiffs then move for early discovery to subpoena the identity of each Doe defendant from the service provider and send a settlement demand letter.6 Plaintiffs profit because some defendants feel compelled to settle rather than risk facing $150,000 in statutory damages along with court costs.7 Additionally, because some of the files being shared on P2P networks are pornographic films, defendants may be even more compelled to settle rather than be named as an illegal downloader of pornography.8 The key to all of this is large-scale joinder, that allows plaintiffs to save thousands if not millions of dollars in filing fees in order to facilitate this process.9

This article discusses the use of permissive joinder in copyright troll litigation under Rule 20 of the Federal Rules of Civil Procedure. A vast majority of courts have taken one of two approaches to the issue of joinder in these lawsuits. One group has severed defendants because “downloading the same file did not mean that each of the defendants were engaged in the same transaction or occurrence.”10 Another group has held that joinder is proper and allowed plaintiffs to go forward with discovery into the defendants’ identities.11 Neither approach is satisfactory. The first group protects defendants, but does so only by misinterpreting the breadth of joinder under the Federal Rules. The second group properly interprets the scope of permissive joinder, but does so at the expense of potentially innocent defendants. At least one court, however, has been able to balance the twin goals of fidelity to the law and abating coercion. The District of Massachusetts Court severed all defendants using the “broad discretion granted it under Rule 20(b).”12 Notwithstanding the defendants satisfying the requirements for permissive joinder, “[t]he court may issue orders . . . to protect a party against embarrassment, delay, expense or other prejudice that arises from including a person against whom the party asserts no claim and who asserts no claim against the party.”13 Although severance may only be a temporary victory, it may increase the initial cost to instigate proceedings.14 Such temporary measures are important because “[t]he copyright troll industry has been multiplying like especially fertile rabbits to scour the Internet in the hope of monetizing copyright infringement.”15

Permissive joinder of defendants is governed by Federal Rule of Civil Procedure 20. Rule 20(a) provides that defendants may be joined as parties if

(A) any right to relief is asserted against them jointly, severally, or in the alternative with respect to or 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.16

This standard is interpreted broadly because “[u]nder the Rules, the impulse is toward entertaining the broadest possible scope of action.”17 Interpreting similar language in the rules for compulsory counterclaims, the Supreme Court has held that “‘[t]ransaction’ is a word of flexible meaning. It may comprehend a series of many occurrences, depending not so much upon the immediateness of their connection as upon their logical relationship.”18 Notwithstanding the broad language of Rule 20(a), the court still maintains broad discretion to sever parties to protect “against embarrassment, delay, expense, or other prejudice” under Rule 20(b). Furthermore, the court has discretion to sever parties sua sponte under Rule 21.19

The courts that have severed defendants in response to a copyright troll’s complaint did so because “downloading the same file did not mean that each of the defendants were engaged in the same transaction or occurrence.”20 While this protects defendants, the reasoning is inconsistent with the technical realities of P2P file sharing. Unlike traditional file-sharing programs where a file is directly transferred from one computer to another, P2P file sharing allows many “peers” to simultaneously exchange small pieces of a file with each other.21 Even though defendants may never have exchanged information with each other, “a defendant’s ‘generation’ of peers—peers that a defendant likely directly uploaded to—helped pass on pieces of the Work to the next ‘generation’ of active peers.”22 Therefore, “[a]lthough . . . the Does were not downloading . . . at the exact same time . . . each download directly facilitated the others in such a way that the entire series of transactions would have been different but for each of Defendants’ infringements.”23 Therefore, it is difficult to escape the conclusion that defendants sharing the same file over a P2P network have engaged in the “same transaction, occurrence, or series of transactions or occurrences,” as broadly defined.24

The second group of courts has held that joinder is proper and allowed plaintiffs to go forward with early discovery.25 These holdings have the opposite effect of strictly honoring the Federal Rules of Civil Procedure while leaving defendants vulnerable to coercion. Unequal bargaining power in copyright troll lawsuits forces defendants to settle rather than defend themselves; defendants face the prospect of up to $150,000 in statutory penalties, high costs of litigation, and the embarrassment of being publicly named as an illegal downloader.26 The risk of embarrassment is “notably magnified” when the plaintiff is a rights holder to a pornographic film.27 This inequality is especially unsettling in light of the fact that many defendants may be innocent. Plaintiff’s counsel in one case estimated that only 30% of anonymous defendants were responsible for downloading the protected content.28 Plaintiff’s counsel admitted that the responsible party could be a teenage child, neighbor, or significant other.29 In one illustrative example, a sixty-six-year-old retired teacher was sued for sharing the music of Snoop Dogg.30 These realities make clear that allowing copyright troll suits to progress unabated is not an option because “the risk of extortionate settlements is too great to ignore, especially when joinder is being used to that end.”31

Measures to mitigate prejudice toward defendants may have little effect because a vast majority of copyright troll cases are resolved by potentially extortionate settlements and never proceed past early discovery.32 Furthermore, plaintiffs have sometimes simply dropped the defendants that have moved to quash discovery and proceeded against the rest.33 These tactics used to evade protective measures have made several courts “[c]oncerned that the joinder mechanism is being manipulated to facilitate a low-cost, low-risk revenue model for the adult film companies.”34

Given the realities of joinder in the context of P2P file sharing, the court should not allow plaintiffs to use joinder to coerce settlements out of potentially innocent defendants, but the court also should not manipulate the “logical relationship” test of Rule 20(a)(2)(A) to accomplish this. Courts may, however, use their discretion under Rule 20(b) to sever parties in order to prevent prejudice.35 This approach allows courts to honestly interpret the standards for joinder while simultaneously preventing the joinder rules from becoming a subsidy for copyright troll plaintiffs. At least one court in the district of Massachusetts has decided to take this approach.36 The court reasoned that the general structure of copyright troll litigation holds such a potential for abuse that the “[c]ourt’s role shifts from encouraging [settlement] to protecting against it.”37 This case suggests that courts may be able to properly apply the standard for joinder of parties while protecting defendants from abuse as copyright troll litigation continues to grow.38

1 J.D., Northeastern University School of Law, expected 2014.

2 See Third Degree Films v. Does 1-47, No. 12–10761–WGY, 2012 WL 4498911 at * 1 (D. Mass. Oct. 2, 2012) [hereinafter Third Degree I]; Sarah Jacobsson Purewal, Copyright Trolls: 200,000 BitTorrent Users Sued Since 2010, PC World (Aug. 9, 2011, 5:24 AM), (estimating that copyright troll plaintiffs sued 200,000 defendants from 2010 to 2011).

3 James DeBriyn, Shedding Light on Copyright Trolls: An Analysis of Mass Copyright Litigation in the age of Statutory Damages, 19 UCLA Ent. L. Rev. 79, 86 (2012).

4 Here “P2P” refers to programs like BitTorrent that allow multiple users (“peers”) to join a “swarm” to exchange small pieces of a file with each other. See Third Degree Films v. Does 1-36, No. 11-cv-15200, 2012 WL 2522151, at * 1–2 (E.D. Mich. May 29, 2012) [hereinafter Third Degree II].

5 Third Degree I, 2012 WL 4498911, at * 8.

6 Id.

7 Id.; DeBriyn, supra note 2, at 98–99; 17 U.S.C. § 504(c)(2) (2012) (allowing a copyright owner to collect up to $150,000 in damages against willful infringement).

8 See, e.g., Third Degree I, 2012 WL 4498911, at * 8.

9 See id. at * 9 (noting that an adult film company was able to use joinder to avoid $25,000 in fees); DeBriyn, supra note 2, at 95 (noting that a plaintiff was able to use joinder to avoid $1.75 million in fees).

10 On The Cheap, LLC v. Does 1-5011, 280 F.R.D. 500, 502 (N.D. Cal. 2011).

11 See, e.g., Digital Sin, Inc. v. Does 1-176, 279 F.R.D. 239, 244–45 (S.D.N.Y. 2012).

12 See Third Degree I, 2012 WL 4498911 at * 3. Other courts have used Rule 20(b) as an alternative basis for severance while holding that defendants did not meet the requirements for permissive joinder. See, e.g., On The Cheap, LLC, 280 F.R.D. at 503.

13 Fed. R. Civ. P. 20(b).

14 DeBriyn, supra note 2, at 95–97.

15 Id. at 90–91.

16 Fed. R. Civ. P. 20(a)(2).

17 United Mine Workers of America v. Gibbs, 383 U.S. 715, 724 (1966); see also United States v. Mississippi, 380 U.S. 128, 142–43 (1965) (holding that state registrars acting independently to enforce a registration law engaged in the same series of transactions or occurrences).

18 Moore v. N. Y. Cotton Exchange, 270 U.S. 593, 610 (1926).

19 Federal Rule of Civil Procedure 21 states “On motion or on its own, the court may at any time, on just terms, add or drop a party.” Fed. R. Civ. P. 21.

20 On The Cheap, LLC v. Does 1-5011, 280 F.R.D. 500, 502 (N.D. Cal. 2011). The “common questions of law or fact” requirement of Rule 20(a)(2)(B) are worth discussing only briefly. Courts have tended to find that this standard is satisfied by the fact that plaintiffs allege the same claim against each defendant and that each defendant’s IP address was uncovered during the same investigation. See, e.g., Third Degree II, 2012 WL 2522151 at * 4.

21 Third Degree II, 2012 WL 2522151 at * 1.

22 Third Degree II, 2012 WL 2522151, at * 8–9.

23 Patrick Collins, Inc. v. Does 1-39, No. 12-cv-00096-AW, 2012 WL 1432224, at * 3 (D. Md. Apr. 24, 2012).

24 Fed. R. Civ. P. 20(a)(2)(A).

25 See, e.g., Digital Sin, Inc. v. Does 1-176, 279 F.R.D. 239, 244 (S.D.N.Y. 2012).

26 DeBriyn, supra note 2, at 98–100.

27 Id. at 99; see also Third Degree I, 2012 WL 4498911, at * 8.

28 Digital Sin, Inc.*, 276 F.R.D. at 242.

29 Id.

30 Adam Langston, Return of the John Doe: Protecting Anonymous Defendants in Copyright Infringement Actions, 41 Stetson L. Rev. 875, 875 (2012).

31 Third Degree Films, Inc. v. Does 1-108, No. DKC 11-3007, 2012 WL 1514807, at * 4 (D. Md. Apr. 27, 2012) [hereinafter Third Degree III].

32 Third Degree III, 2012 WL 1514807, at * 4.

33 Raw Films, Ltd. v. Does 1-32, No. 3:11cv532-JAG, 2011 WL 6182025, at * 2 (E.D. Va. Oct. 5, 2011).

34 E.g., Third Degree I, 2012 WL 4498911, at * 8.

35 Fed. R. Civ. P. 20(b).

36 See Third Degree I, 2012 WL 4498911 at * 3.

37 Third Degree I, 2012 WL 4498911, at * 9.

38 See DeBriyn, supra note 2, at 90–91.