CHAPTER 3: COURT PROCEDURES 37
Tr. 49.) Novak argues that, in fact, his intent in transferring the domain name from “Bulkregister.com” to Nitin was to bring the
domain name under the control of a New York-based registrar. (Jan. 25, 2007 Tr. 110-11; Feb. 9, 2007 Tr. 66-67.) According to
Novak, had he received a DNTA from Tucows, a Canadian registrar, he “would have declined the transfer, first because [he] would
have felt deceived in seeing another company being involved in this transaction, and moreover a company based not only outside
FN6. In addition, Tucows argues that it was clear from the electronic confirmation form that plaintiff would be entering into
a contract with Tucows (rather than with Nitin) by language on the form stating that “[t]he domain listed above will be
transferred to Registersite.com (An authorized reseller of Tucows).” (Tucows’ Br., at 4.)
During the evidentiary hearing, Noss, Tucows’ CEO, testified, based upon a review of Tucows’ records, that the plaintiff had, in
T2.) Three seconds later, Tucows sent a confirmation email to “bob @petswarehouse.com,” Novak’s email address.FN7 (Dec. 22,
2006 Tr. 30; Defs.’ Ex. T2.) On the same day, at 5:07 p.m. and 26 seconds, a hyperlink within the email was clicked by the
recipient. (Dec. 22, 2006 Tr. at 58-59; Defs.’ Ex. T6.) Less than one minute later, at 5:08 p.m. and 15 seconds, the email recipient
typed the required domain name and transfer key into the Tucows website. (Dec. 22, 2006 Tr. at 59; Defs.’ Ex. T6.) Finally, at 5:14
pm and 51 seconds, the contract on the website was assented to and the request was submitted. (Dec. 22, 2006 Tr. at 59; Defs.’
Ex. T6.) Noss explained that, if Novak had not entered the proper information during each of these steps, or if he had simply
ignored the confirmation email from Tucows, the transfer would have failed. (Dec. 22, 2006 Tr. at 60.)
FN7. Novak concedes that he is the sole user of the email address “bob@petswarehouse.com,” and that the address is
not case-sensitive.” (Feb. 9, 2007 Tr. 27, 28.)
In response, Novak counters that he never engaged in the required steps, and that it was actually Agarwal, CEO of Nitin, who
“went directly into the Tucows database, changed the contact info to himself, received the confirmation e-mails, and clicked them
off to force the transfer to go through. Alternatively, he modified the database to indicate that that had occurred.” (Feb. 9, 2007 Tr.
Carnival Cruise Lines, Inc. v. Shute,
499 U.S. 585, 589-95 (1991). Such clauses will be enforced only if found to be exclusive or
mandatory.
John Boutari and Son, Wines and Spirits, S.A., v. Attiki Imp. and Distrib., Inc.,
22 F.3d 51, 52-53 (2d Cir.1994). It is
clear that the choice of forum is mandatory in this instance, as specific language regarding venue has been included in the clause,
specifying that “any action relating to this agreement must be brought in Ontario.”
See, e.g., John Boutari and Son, Wines and
Spirits, S.A.,
22 F.3d at 53;
Docksider, Ltd. v. Sea Tech., Ltd.,
875 F.2d 762, 763-64 (9th Cir.1989);
Cent. Nat’lGottesman, Inc. v.
FN8. In his supplemental reply brief, dated February 21, 2007, Novak asserts for the first time that he is not able to litigate
this dispute in Canada for health reasons. In support of this claim, Novak submits a letter from his treating neurologist, Dr.
Candice Perkins, M.D., stating that Novak sustained a carotid occulsion and stroke in August 2000 and continues to suffer
from a persistent blockage of blood flow to his brain. (Pl.’s Supp. Br., Ex. A.) According to Dr. Perkins, “as a result
FN9. In his supplemental brief, Novak also raises for the first time the argument that he could be deprived of a remedy
under Canadian law because he “doubt[s] very much that court would have jurisdiction over Nitin but more importantly
Canada would have no jurisdiction over John Benn as a witness residing in Alabama” and “there is an issue of the statute
of limitation in re-commencing this action in Canada.” (Pl.’s Supp. Br., at 2, 3.)
First, a “statute of limitations bar is not a basis for invalidating [a foreign] forum selection clause.”
Asoma Corp. v. M/V.
Court is not persuaded that this factor suggests the “fundamental unfairness” of litigating the instant dispute in Canada.
At least in the context of transfers of lawsuits pursuant to 28 U.S.C. § 1404(a), courts have held that the availability of
witnesses does not “tip the balance” with regard to the choice of a forum, particularly where the testimony of such
witnesses may be obtained by videotape or deposition.
Dealtime.com Ltd. v. McNulty,
123 F.Supp.2d 750, 757
(S.D.N.Y.2000); (citing Fed.R.Evid. 804(a)(5) and
Citigroup Inc. v. City Holding Co.,
97 F.Supp.2d 549, 561-62
names, and that Tucows, a Canadian company, would be the actual registrar. In other words, according to plaintiff, he was lured
into transacting with Nitin on the basis of false information and misrepresentation. Plaintiff also alleges that his domain name was
fraudulently transferred without his permission from Nitin, with whom he contracted by phone, to Tucows, with whom he did not
contract at all. However, even if plaintiff were able to establish valid fraud claims based on these assertions, which he likely cannot,
given his “click-through” assent to the Tucows DNTA, such allegations are insufficient to void a forum selection clause on the basis
fails to allege any fraud specifically relating to the forum-selection clause in question. Further, there is no indication that the clause
was added to the DNTA in bad faith, or by coercion. Plaintiff therefore has not established grounds for rejecting the clause on the
basis of fraud.
C. UNCONSCIONABILITY
Plaintiff also argues that the DNTA is unconscionable under New York law because he was never provided with an opportunity to
Nelson v. McGoldrick,
896 P.2d 1258, 1262 (Wash.1995), and
Gillman v. Chase Manhattan Bank, N.A.,
534 N.E.2d 824, 828
(N.Y.1988)). While plaintiff maintains that he neither read nor assented to any agreement with Tucows, this Court has found that
plaintiff did, in fact, “click–through” his assent to the DNTA. As a result, even if plaintiff failed to read the terms of the contract, he is
nevertheless bound by the forum-selection clause.”[I]t is a fundamental principle of contract law that a person who signs a contract
is presumed to know its terms and consents to be bound by them.”
Paper Express, Ltd. v. Pfankuch Maschinen GMBH,
972 F.2d
2005) (“He is bound by the terms of the forum selection clause even if he did not take the time to read it because ‘a signatory to a
contract is presumed to have read, understood and agreed to be bound by all terms, including the forum selection clauses, in the
documents he or she signed.’ ”) (quoting
Sun Forest Corp. v. Shvili,
152 F.Supp.2d 367, 382 (S.D.N.Y.2001) (internal citation
FN10. Novak contends that Tucows should be subject to jurisdiction before this Court because in an unrelated case,
Bennett v. America Online, Inc.,
No. 06-CV-13221, 2007 WL 241318 (E.D.Mich. Jan. 23, 2007), “Tucows had acquiesed
to the jurisdiction of the United States Courts not with standing their forum selection clause.” (Pl .’s Supp. Br., at 2.) In
(1949)). Plaintiff alleges that enforcement of the forum selection clause in Tucows’ DNTA counters New York state’s public policy
as expressed in New York General Business Law § 349. Section 349 allows the state attorney general to bring civil actions on
behalf of the people of New York state in order to enjoin unlawful deceptive acts or practices. N.Y. Gen. Bus. Law § 349. In
addition, subsection (h) of the statute provides for an individual cause of action on the basis of such acts or practices. N.Y. Gen.
Bus. Law § 349(h). Plaintiff curiously relies upon this Court’s decision in
Gill v. World Inspection Network Int’l, Inc.,
which directly
residents would be forced to litigate in another state or country on the basis that such clauses prevent confusion and costly
litigation regarding where suits relating to the contract should be brought and defended, and reduce costs to the consumer by
limiting the number of fora in which a case may be brought.
See, e.g., Effron,
67 F.3d at 10 (finding it reasonable for cruise line to
select a single venue for passenger suits) (quoting
Shute,
499 U .S. at 593-94);
Hellex Car Rental Sys., Inc. v. Dollar Sys., Inc.,
No. 04-CV5580, 2005 U.S. Dist. LEXIS 33858, at *16 (E.D.N.Y. Nov. 9, 2005) (“It is entirely reasonable for [defendant] to require
Apr. 29, 2005) (collecting cases). Further, at least two courts within this Circuit have held that “[i]t is well established that a ‘range
of transaction participants, parties and non-parties, should benefit from and be subject to forum selection clauses.’ “
Weingrad,
2005 U.S. Dist. LEXIS 26952, at *15-16 (quoting
Int’l Private Satellite Partners, L.P. v. Lucky Cat Ltd.,
975 F.Supp. 483, 485-86
(W.D.N.Y.1997) (internal citation omitted)). A non-party to an agreement may be bound by a forum selection clause where the
party is “ ‘closely related’ to the dispute such that it becomes ‘forseeable’ that it will be bound.”
Hugel v. Corp. of Lloyd’s,
999 F.2d
FN11. Moreover, as a third-party beneficiary of the DNTA, Nitin is, “by definition,” “closely related” to the dispute at issue
and “forseeably” bound by the forum-selection clause.
Hugel,
999 F.2d at 209-10 n. 7 (“While it may be true that third–
party beneficiaries of a contract would, by definition, satisfy the ‘closely related’ and ‘foreseeability’ requirements,
see e.g.,
FN12. Even if the burden to prove venue rested with defendants, rather than plaintiff, that burden would be easily met
given the record in this case.
VI. LANHAM ACT CLAIMS AND PENDENT STATE CLAIMS
Defendants also contend that plaintiff’s Lanham Act claims of trademark infringement, trademark dilution and cybersquatting are
fatally defective since it cannot be shown that Nitin or Tucows used Novak’s alleged trademark, “petswarehouse,” “in commerce.”
VII. CONCLUSION
For the foregoing reasons, it is hereby ordered that plaintiff’s motion to strike is GRANTED in part and DENIED in part. Defendant
Tucows’ motion to strike is GRANTED.
It is further ordered that both defendants’ motions to dismiss on the basis of improper venue are GRANTED in their entirety.
SO ORDERED.
Supplemental Case Printout for:
Shifting Legal Priorities for
Business
C.D.Cal.,2007.
Columbia Pictures Industries v. Bunnell
Justin BUNNELL, et al., Defendants.
No. CV 06-1093FMCJCX.
May 29, 2007.
CHOOLJIAN, Magistrate J.
I. SUMMARY
data in issue is routed; FN1 (4) defendants have failed to demonstrate that the preservation and production of such data is unduly
burdensome, or that the other reasons they articulate justify the ongoing failure to preserve and produce such data; (5) defendants
must preserve the pertinent data within their possession, custody or control and produce any such data in a manner which masks
the Internet Protocol addresses (“IP addresses”) of the computers used by those accessing defendants’ website; (6) sanctions
against defendants for spoliation of evidence are not appropriate in light of the lack of precedent for requiring the retention of data
FN1. It may also be the case that the data in issue is within defendants’ possession, custody and control by virtue of
defendants’ contractual relationship with the third party entity. In that circumstance, defendants would, at a minimum,
have an obligation to make reasonable inquiry of the third party entity for the data in issue.
See
A. Farber and Partners,
Inc. v. Garber,
234 F.R.D. 186, 189 (C.D.Cal.2006).
II. PROCEDURAL HISTORY
FN2. Request No. 10 seeks “all documents that identify the dot-torrent files that have been made available by, searched
for, or downloaded by users of TorrentSpy, including documents that identify the users who have made available,
searched for, or downloaded such dot-torrent files.”Request No. 12 seeks “all documents, including server logs,
databases of a similar nature, or reports derived from such logs or databases that [defendants] maintain, have ever
44 CASE PRINTOUTS TO ACCOMPANY BUSINESS LAW
have, at a minimum, been searched for by users of TorrentSpy, it is encompassed by Document Request No. 10.
Similarly, as the Server Log Data constitutes an available document concerning electronic communications between
FN4. “RT” refers to the Reporter’s Transcript of the April 3, 2007 hearing.
FN5. Subsequent to the hearing, plaintiffs and defendants submitted proposed findings regarding Plaintiffs’ Motion for the
court’s consideration.
III. FACTS FN6
FN6. The court finds plaintiffs’ expert Ellis Horowitz to be the most credible of the three technical declarants/witnesses
(
i.e.,
Horowitz, Parker, and Bunnell). To the extent the testimony and statements of Parker and Bunnell conflict with those
of Horowitz, the court accepts the testimony and statements of Horowitz. The court finds that defendant Parker’s
testimony is credible in part and gives it some weight. However, as discussed below, the court finds that portions of
information is copied into and stored in RAM. (Horowitz II Decl. ¶ 4). RAM is a form of temporary storage that every computer uses
to process data. (Horowitz II Decl. ¶ 4). Every user request for a page or file is stored by the web server program in RAM in this
fashion. (Horowitz II Decl. ¶ 4). The web server interprets and processes that data, while it is stored in RAM, in order to respond to
user requests. (Horowitz II Decl. ¶ 4). The web server then satisfies the request by sending the requested file to the user. (Horowitz
II Decl. ¶ 3). If the website’s logging function is enabled, the web server copies the request into a log file, as well as the fact that
the requested file was delivered. (Horowitz I Decl. ¶ 12; Horowitz II Decl. ¶ 3). If the logging function is not enabled, the request is
not retained. (Horowitz I Decl. ¶ 12; Horowitz II Decl. ¶ 3). While logging such information can be useful to a website operator in
many respects, and may be a usual practice of many website operators, such logging is not essential to the functionality of a
website.FN8 (Horowitz I Decl. ¶ 13; RT 41-42).
FN7. An IP address is a standard way of identifying a computer that is connected to the Internet.
United States v.
Heckenkamp,
482 F.3d 1142, 1144 (9th Cir.2007). With an IP address, a party could identify the Internet Service Provider
FN8. As a general matter, logging data can be useful for maintenance and upkeep of a site, to identify and correct
technical problems with the site, to examine the website traffic patterns and evaluate the performance of the site, and to
5). The IIS web server program contains logging functionality-meaning that it has the capacity, if the logging function is not
disabled, to retain the Server Log Data. (Horowitz I Decl. ¶ 10; Horowitz II Decl. ¶ 2; Jt. Bunnell/Parker Decl. ¶ 5).FN9
FN9. It is the default when IIS is installed, for logging to be on. (RT 144; Horowitz I Decl. ¶ 10).
Since its inception, defendants’ website’s logging function has not been enabled to retain the Server Log Data. (RT 99; Parker I
FN10. Defendants’ privacy policy, which is posted on defendants’ website, advises users,
interalia,
that the site “will not
collect any personal information about you [the user] except when you [the user] specifically and knowingly provide such
information.”(Parker I Decl., Ex. B). The policy further reflects that the site reserves the right at any time to modify, alter or
update the policy, but that if the site does so, it will post the changes so that users are always aware of what information
the site collects, how the information is used, and under what circumstances the information is disclosed. (Parker I Decl.,
FN11. Prior to the filing of Plaintiffs’ Motion, defendants’ website provided links to third-party sites that have torrent files on
their sites, as well as links to torrent files on the cache of defendants’ website. (RT 111). Once defendants made the
FN12. Defendant Parker testified that he was advised by a Panther representative that Panther does not have the
capacity for full-server logging on all of its servers. (RT 75). Although plaintiffs argue that Panther can selectively log
certain data, there is no evidence in the record as to whether Panther specifically has the capacity to log the Server Log
Data in issue. (RT 177).
FN13. In light of the change in the method of operation, and the timing thereof, as well as the other evidence in the
record, the court finds that defendants have the ability to manipulate at will how the Server Log Data is routed. Indeed,
defendants represent that they could disengage and resume the functions currently performed by Panther if directed to
log the Server Log Data in issue. (RT 72, 103-04).
FN14. Defendants contend that plaintiffs’ request for Server Log Data is overbroad because the vast majority of the
website’s users are located overseas such that their conduct cannot constitute copyright infringement. (RT 115-20, 125-
26). The court rejects this contention. First, defendants’ evidence regarding the volume of overseas traffic lacks
foundation and is speculative at best. Second, even if defendants are correct regarding the asserted volume of overseas
traffic, the court still finds such data to be relevant or reasonably calculated to lead to the discovery of relevant admissible
evidence. Having said that, if (1) it is technically feasible; (2) defendants could reliably demonstrate that (i) Panther’s
United States servers process Server Log Data for users in the United States; and (ii) measures could be taken to protect
that the Server Log Data is electronically stored information because such data is copied to the RAM while user requests are
processed. (Plaintiffs’ Supp. Memo II at 2; Horowitz II Decl. ¶ 4).
Although the parties point to no cases in which a court has assessed whether data present only in RAM constitutes electronically
stored information under Rule 34, the Ninth Circuit has addressed whether data in RAM is electronically stored information in
another context. In
MAI Systems Corp. v. Peak Computer, Inc.,
991 F.2d 511, 518-19 (9th Cir.1993), the Ninth Circuit determined
in the context of the Copyright Act, that software copied into RAM was “fixed” in a tangible medium and was sufficiently permanent
or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.FN15It
defined RAM as “a computer component in which data and computer programs can be temporarily recorded.”
Id.
at 519 (citing
Apple Computer, Inc. v. Formula International, Inc.,
594 F.Supp. 617, 622 (C.D.Cal.1984) (describing the copying of programs into
RAM as a “temporary fixation”)). RAM has elsewhere been described as providing “temporary storage.”
See
Adobe Systems Inc. v.
Macromedia, Inc.,
201 F.Supp.2d 309, 318 (D.Del.2002) (characterizing RAM as “temporary storage”);
seealso
Apple Computer,
Inc. v. Franklin Computer Corp.,
714 F.2d 1240, 1243 n. 3 (3d Cir.1983) (“RAM … is a chip on which volatile internal memory is
stored which is erased when the computer’s power is turned off.”).
FN15. The Ninth Circuit effectively reaffirmed the continuing viability of
MAI
in it recent opinion
Perfect 10, Inc. v.
Amazon.com, Inc.,
487 F.3d 701, 2007 WL 1428632 (9th Cir. May 16, 2007). In that case, the court stated: “A
48 CASE PRINTOUTS TO ACCOMPANY BUSINESS LAW
Consequently, the court concludes that even though the Server Log Data is now routed to Panther and is temporarily stored in
Panther’s RAM, the data remains in defendants’ possession, custody or control.
recently, was temporarily stored in defendants’ RAM.
As noted above, because the Server Log Data is temporarily stored in Panther’s RAM, and is in the possession, custody or control
of defendants, defendants would not be required to create new information for its production. This case is thus distinguishable from
Replay TV,
2002 WL 32151632 (C.D.Cal.2002) and
Alexander,
194 F.R.D. 305 (D.D.C.2000) on which defendants heavily rely. In
both of those cases, the courts found that the information sought by plaintiffs was never in existence.
See
Replay TV,
2002 WL
requiring such preservation would be unduly burdensome.
In determining whether to issue a preservation order, courts undertake to balance at least three factors: (1) the level of concern the
court has for the continuing existence and maintenance of the integrity of the evidence in the absence of an order directing
preservation; (2) any irreparable harm likely to result to the party seeking the preservation of the evidence absent an order
directing preservation; and (3) the capability of the party to maintain the evidence sought to be preserved, not only as to the
¶ 7). Consequently, the court finds that it would not be an undue burden on defendants to employ a technical mechanism through
which retention of Server Log Data in RAM is enabled.FN16
FN16. The record also reflects that a programmatic method (which is distinct from enabling the logging function) could be
employed to retain the Server Log Data from http headers while the data is in RAM. (RT 78, 81). Employing such a
technique would require the writing of a script to collect the Server Log Data which would take several hours. (RT 78, 81).
The court also find that the use of the programmatic method would not impose an undue burden on defendants.
Second, the court considers the potential burden attendant to actually retaining (
i.e.,
recording and storing) and producing the
FN17. Based on the (incorrect) assumption that the data to be preserved would have a volume of 30 to 40 gigabytes a
day, defendants estimate that they would either need to redevelop their existing server at an estimated cost of $10,000
and an expenditure of two weeks of time, or terminate their existing arrangement and set up a new higher capacity server
sytem at an estimated cost of $50,000. (Defendants’ Supp. Memo II at 5; Jt. Bunnell/Parker Decl. ¶¶ 6, 8).
FN18. Defendants contend that since they are not physically in the Netherlands where their server is located, saving the
Server Log Data would require a File Transfer Protocol (“FTP”) download of the files from the server. (Jt. Bunnell/Parker
FN19. Defendant Parker testified that he based his estimate on the volume of logging “everything”–“every image, any kind
of thing that loads up to the user”-because he did not believe that the logging function could be selectively enabled to
retain just the Server Log Data. (RT 60-62). The court does not accept defendant Parker’s testimony regarding the
inability to selectively enable logs to retain solely the Server Log Data in issue. Indeed, defendant Parker ultimately
FN20. Plaintiffs contend that even if the data generated a few gigabytes of storage space per day, the data could be
FN22. Defendant Parker similarly indicated that he would not have the same concerns if the programmatic method was
limited to retention of only the Server Log Data (as opposed to all incoming data). (RT 86).
50 CASE PRINTOUTS TO ACCOMPANY BUSINESS LAW
Based upon the evidence regarding the estimated volume of data resulting from the logging of solely the Server Log Data in issue
FN23. Although defendants suggest that the actual IP addresses could be retrieved from masked/encrypted IP addresses
through “brute force,” the court has protected against that by prohibiting plaintiffs from taking any measures to unmask or
decrypt the masked/encrypted IP addresses.
(a) Privacy Policy
Defendants contend that Plaintiffs’ Motion should be denied because plaintiffs’ privacy policy precludes them from preserving and
producing “personal information” about their website’s users. The court rejects this contention.
*9 First, defendants cannot insulate themselves from complying with their legal obligations to preserve and produce relevant
information within their possession, custody or control and responsive to proper discovery requests, by reliance on a privacy policy-
the terms of which are entirely within defendants’ control.
Second, even if a litigant’s privacy policy could have such an impact, it is not clear to the court that defendants’ current privacy
policy actually prohibits the retention and production of the Server Log Data.
Seesupra
note 10. Moreover, the record reflects that
despite this policy, defendants, unbeknownst to their users, do disclose IP addresses and search queries to third parties, albeit
without disclosure of clicks on dot-torrent download links. (RT 90-97).
Third, to the extent defendants’ privacy policy may prohibit the disclosure of IP addresses, compliance with this order does not
violate such policy because IP addresses are to be masked.
Finally, even if the privacy policy currently prohibits the retention and disclosure of the Server Log Data, the policy itself advises
users that such policy may be modified at any time. As this order does not contemplate the historical retention and production of
FN24. As the cases upon which defendants rely involve third party subpoenas to electronic server providers who were not
the intended recipients of the communications in issue, they are not applicable.
FN25. As the good faith reliance on a court order (such as the instant order) provides a complete defense to any civil or
criminal action predicated on a violation of the above-referenced non-disclosure provision, the court also rejects
defendants’ assertions of burden based on the potential of being sued for violating this provision. 18 U.S.C. § 2707(e).
(d) The Wiretap Act
Defendants argue that Plaintiffs’ Motion should be denied because the Wiretap Act (18 U.S.C. §§ 2510-22) prohibits the disclosure
FN26. As the good faith reliance on a court order (such as the instant order) provides a complete defense to any civil or
criminal action predicated on a violation of the above-referenced non-disclosure provision, the court also rejects
defendants’ assertions of burden based on the potential of being sued for violating this provision. 18 U.S.C. § 2520(d)(1).
FN27. More specifically, a pen register is a device or process which records dialing, routing, addressing or signaling
information transmitted by an instrument or facility from which a wire or electronic communication is transmitted, excluding
the contents of any communication. 18 U.S.C. § 3127(3). Such term does not include (i) any device or process used by a
provider of electronic communication service for billing, recording as an incident to billing, or providing communications
services; or (ii) any device or process used by such provider for cost accounting or other like purposes in the ordinary
course of its business. 18 U.S.C. § 3127(3).
FN28. More specifically, a “trap and trace device” is a device or process which captures the incoming electronic or other
impulses which identify the originating number of an electronic communication, excluding the contents of any
communication. 18 U.S.C. § 3127(4).
As the Server Log Data sought by plaintiffs encompasses incoming IP addresses, it arguably implicates the prohibition against the
FN29. For example, although defendant Bunnell testified that the sites Grokster and Lokitorrent “were basically shut
down” because they were “forced to turn over log information” (RT 153), on cross-examination, it became clear that he did
not have any personal knowledge regarding such matters and that his testimony was, at most, based on things he had
read or heard which might or might not be true. (RT 159-62). Similarly, defendant Bunnell provided a declaration and
FN30. Defendants suggest that Digital Millennium Copyright Act (“DMCA”) subpoenas are available to plaintiffs pursuant
to 17 U.S.C. § 512(h), and provide a more convenient, less burdensome, and less expensive means of obtaining the
Server Log Data. The court rejects defendants’ assertion. The DMCA permits, under circumstances specified therein,
subpoenas to be issued for “information sufficient to identify [an] alleged infringer.”17 U.S.C. § 512(h)(1). Defendants
have not satisfied the court that the Server Log Data (and all facets thereof) may permissibly be sought pursuant to such
subpoenas, or that DMCA subpoenas are a viable alternative in this action. In any event, the court does not find that
DMCA subpoenas would be “more convenient, less burdensome, or less expensive.”
In light of fact that the Server Log Data is currently routed to Panther, the court has also considered whether a third
party discovery request to Panther would be a viable alternative. The court concludes that while such data may well be
CHAPTER 3: COURT PROCEDURES 53
concerns should relieve defendants of their obligation to preserve and produce the Server Log Data.
*12 First, as it now appears that the entity which has immediate possession of the Server Log Data has over 25 United States
servers, defendants’ expressed international concerns no longer appear valid. At a minimum, their expressed concerns carry less
75.These factors include the importance of the information requested in the litigation, the degree of specificity of the request,
whether the information originated in the United States, the availability of alternative means of securing the information, the extent
to which noncompliance would undermine important interests of the United States or compliance would undermine important
interests of the state where the information is located, and the degree of hardship on the producing party and whether such
hardship is self-imposed.
Richmark Corp.,
959 F.2d at 1475-77).
cause defendants to believe that a preservation order should not issue. Plaintiffs maintain that such data should be produced, at
least in a form that masks the IP addresses.
On a motion to compel discovery, the party from whom electronically stored information is sought must show that the information is
not reasonably accessible because of undue burden or cost. F.R. Civ. P. 26(b)(2)(B). If such a showing is made, a court may
nonetheless order discovery from such sources if the requesting party shows good cause, considering the limitations of F.R. Civ.
P. (b)(2)(C). A court may limit discovery of electronic materials under F.R. Civ. P. 26(b)(2)(C) if: (i) the discovery sought is
unreasonably cumulative or duplicative, or is obtainable from some other source that is more convenient, less burdensome, or less
expensive; (ii) the party seeking discovery has had ample opportunity by discovery in the action to obtain the information sought; or
54 CASE PRINTOUTS TO ACCOMPANY BUSINESS LAW
retention and production of data which otherwise would be temporarily stored only in RAM, is based in significant part on
the nature of this case, the key and potentially dispositive nature of the Server Log Data which would otherwise be
calculated to lead to the discovery of admissible evidence, is reasonably likely to be requested during discovery, and/or the subject
of a pending discovery request.
Wm. T. Thompson Co. v. General Nutrition Corp.,
593 F.Supp. 1443, 1455 (C.D.Cal.1984).
Therefore, “[o]nce a party reasonably anticipates litigation, it must suspend its routine document retention/destruction policy and
put in place a ‘litigation hold’ to ensure the preservation of relevant documents.”
Zubulake v. USB Warburg LLC,
220 F.R.D. 212,
218 (S.D.N.Y.2003). As a general rule, the litigation hold does not apply to inaccessible electronically stored information, such as
1. Defendants are directed to commence preservation of the Server Log Data in issue within seven (7) days of this order and to
preserve the Server Log Data for the duration of this litigation or until further of this court or the assigned District Judge. As the
record reflects that there are multiple methods by which defendants can preserve such data, the court does not by this order
mandate the particular method by which defendants are to preserve the Server Log Data.
2. Defendants shall initially produce the Server Log Data (with the exception noted below) by no later than two weeks from the date
of this order. Defendants thereafter have a continuing obligation regularly (no less frequently than every two weeks) to update such
production.FN32Although defendants are required to preserve the IP addresses of the computers used to request dot-torrent files,
FN32. Plaintiffs have represented that they are willing to accept a sample of Server Log Data of one hour a day, provided
that the hour each day is selected to provide a representative picture of the usage of defendants’ site. (RT 180-81). The
court has not limited its order to sampling at this juncture because of concerns that one hour a day will not provide a
CHAPTER 3: COURT PROCEDURES 55
appropriate, to prepare a stipulation accordingly modifying the scope of preservation and production required by this
order. In the absence of such a stipulation, the instant order is without prejudice to a request by defendants to share or
shift the costs of preservation and production.
FN33. For example, if, hypothetically, an IP address of “1234.5678.9101” which requested a dot-torrent file on day one at
FN34. Having said that, absent further order of this court or the assigned District Judge, the Clerk is directed to file and
maintain this order
underseal
for a period of seven (7) days. The court finds good cause to file such order
underseal
for at
least the limited seven-day period in light of the nature of its contents and the fact that it may be based, at least in part on
materials submitted
underseal
pursuant to a protective order. The parties shall have five (5) days from the date of this