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Court Shelves Early Discovery Request Until Infringement Claim Standing Shown

Thursday, June 6, 2013
By David McAuley

A counter-piracy organization's ex parte application for early discovery of the identities of suspected infringers of a copyrighted movie that had been assigned to it was denied because of serious questions regarding the organization's standing to sue, the U.S. District Court for the Northern District of California ruled May 31 (Contra Piracy v. Doe, N.D. Cal., No. 3:13-cv-01133-EDL, 5/31/13).

Standing to sue is a jurisdictional requirement that should be sorted out before discovery or any other proceedings take place, Magistrate Judge Elizabeth D. Laporte said, acting sua sponte.

Here, the court noted, Contra Piracy held a limited assignment to the copyright, and its standing was therefore suspect under Righthaven L.L.C. v. Hoehn, No. 11-16751 (9th Cir. May 9, 2013), and Silvers v. Sony Pictures Entertainment Inc., 402 F.3d 881, 74 U.S.P.Q.2d 1065 (9th Cir. 2005) (59 PTD, 3/29/05). 

Exclusive Rights Required

Silvers ruled that the plaintiff in a copyright infringement action must be the “legal or beneficial owner of an exclusive right under a copyright.” Exclusive rights under copyright, such as the right to reproduce and distribute the work, are specified in 17 U.S.C. § 106, and Silvers pointed out that the right to sue for infringement was not among those listed.

Contra claimed that it was the exclusive assignee of “all enforcement rights and interest worldwide,” possessing “full authority” to prosecute any cause of action regarding the protected work. On that basis, Contra argued, it should be able to subpoena 61 internet service providers in search of the identities of some 3,000 unidentified defendants who allegedly copied the film using BitTorrent file-sharing technology.

The court was not persuaded. It pointed out that only three weeks prior the Ninth Circuit had revisited this topic in Righthaven, and said that, in determining whether a plaintiff had been assigned an exclusive right sufficient to confer standing, courts should look not just at the labels the parties use but at the substance of the assignment itself.

Here, the court said, it appeared that Contra had nothing more than the bare right to sue. That was not enough under Silvers and Righthaven, it said.

The court said it had to decide on the standing issue first. It denied the application for early discovery, and ordered the plaintiff to show cause why the case should not be dismissed for lack of subject matter jurisdiction.

Boden Noel Davidson of Oakland, Calif., represented Contra Piracy.


Text is available at http://www.bloomberglaw.com/public/document/Contra_Piracy_v_Does_1__2919_Docket_No_313cv01133_ND_Cal_Mar_13_2.

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