Case 1:13-cv LGS Document 20 Filed 06/26/13 Page 1 of 8. : Plaintiffs, : : : Defendants. :

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1 Case 113-cv LGS Document 20 Filed 06/26/13 Page 1 of 8 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK X BLOOMBERG, L.P., et al., Plaintiffs, -against- JOHN DOES 1-4, Defendants X LORNA G. SCHOFIELD, District Judge 13 Civ (LGS) ORDER 6/26/13 Before the Court is the Motion for Reconsideration of Order Allowing Expedited Discovery and/or to Quash the Subpoena Served on Google ( Motion ) filed by one Defendant, identifying as John Doe 2 and 4 (hereafter Defendant ). (Dkt. No. 15). For the reasons set forth below, the Motion is DENIED. I. BACKGROUND On March 18, 2013, Plaintiffs Bloomberg L.P., Bloomberg Finance One L.P. and Bloomberg Finance L.P. ( Plaintiffs ) filed the Complaint, alleging trademark infringement, unfair competition, dilution and deceptive and unfair trade practices against four unnamed John Doe Defendants ( Doe Defendants ). (Dkt. No. 1). Plaintiffs allege that the Doe Defendants anonymously publish weblogs ( blogs ) that infringe upon trademarks owned by Plaintiffs, namely the BLOOMBERG mark. (Compl. 1). The allegedly infringing blogs are hosted by non-party Google, Inc., ( Google ) on or (Compl ). 1

2 Case 113-cv LGS Document 20 Filed 06/26/13 Page 2 of 8 Because the blogs do not provide names or contact information for the Doe Defendants, Plaintiffs filed a Motion for Expedited Discovery (Dkt. No. 7) on April 15, 2013, requesting leave to serve subpoenas pursuant to Rule 45 of the Federal Rules of Civil Procedure on Google and potentially other companies for the purpose of identifying and serving the Doe Defendants. Plaintiffs contended that Google possessed information that would reveal the Doe Defendants identities but had refused to provide the information without a court order. Plaintiffs stated that they would be unable to litigate their claims without discovering the identities of the Doe Defendants. On April 18, 2013, the Court granted Plaintiffs Motion for Expedited Discovery. (Dkt. No. 10). In the Order, the Court granted Plaintiffs leave to serve Google with a Rule 45 subpoena seeking information sufficient to identify each Doe Defendant in this action, including name, address, telephone number and address. On April 29, 2013, Plaintiffs submitted a letter to the Court requesting that the Court amend the April 18, 2013 Order to allow Plaintiffs to seek information from Google relating to internet protocol ( IP ) addresses used by the Doe Defendants. On May 14, 2013, the Court granted the request and amended the April 18, 2013 Order to allow Plaintiffs to serve Google with a Rule 45 subpoena seeking information sufficient to identify each Doe Defendant, including all IP addresses associated with any associated with the allegedly infringing blogs. (Dkt. No. 12, May 14 Order ). The May 14 Order permitted Plaintiffs to seek information from Google showing the times and dates when the blogs were accessed or updated by the Doe Defendants and any information correlating those times and dates with the IP addresses. The Court specified that any information disclosed to Plaintiffs in response to the Rule 45 subpoena could be used solely for the purpose of protecting Plaintiffs rights as set forth in the Complaint. 2

3 Case 113-cv LGS Document 20 Filed 06/26/13 Page 3 of 8 On June 9, 2013, Defendant filed the present Motion stating that Defendant is associated with two of the four blogs at issue in the Complaint, namely, the blogs located at bloombergdealfeed.blogspot.com and bloombergcommods.blogspot.fr. Defendant requests that the Court reconsider its May 14 Order and deny Plaintiffs request for expedited discovery upon Google or, in the alternative, quash the subpoena served on Google. Defendant contends that Plaintiffs should be denied access to information that would reveal Defendant s identity, because Defendant has a First Amendment right to speak anonymously. Specifically, Defendant asserts that Plaintiffs have failed to make the legal and factual showing in support of its claims that is required before a court may deny Defendant s First Amendment right to speak anonymously. Defendant separately contends that Plaintiffs have not met their burden to establish that this Court has personal jurisdiction over Defendant. II. DISCUSSION A. Motion for Reconsideration Defendant moves the Court to reconsider its May 14 Order granting Plaintiffs leave to serve a subpoena on Google seeking information sufficient to identify each Doe Defendant. Defendant contends that the requested expedited discovery should be denied because Plaintiffs have failed to make the legal and factual showing in support of their claims that is required before Defendant s First Amendment right to speak anonymously may be denied. A motion for reconsideration generally will be denied unless the moving party can point to controlling decisions or data that the court overlooked matters, in other words, that might reasonably be expected to alter the conclusion reached by the court. Shrader v. CSX Transp., Inc., 70 F.3d 255, 257 (2d Cir. 1995). Local Rule 6.3, which governs motions for reconsideration 3

4 Case 113-cv LGS Document 20 Filed 06/26/13 Page 4 of 8 in this District, is narrowly construed and strictly applied so as to avoid repetitive arguments on issues that the court has already considered fully. In re Gen. Elec. Co. Sec. Litig., 856 F. Supp. 2d 645, 652 (S.D.N.Y. 2012). Local Rule 6.3 provides that a motion for reconsideration of a court order determining a motion shall be served within fourteen days after the entry of the Court s determination of the original motion. Although Defendant s Motion was not brought within fourteen days, the Court will consider the Motion because Defendant did not have notice of Plaintiffs ex parte motion prior to the Court s ruling on it. The United States Supreme Court has recognized that the First Amendment provides protection for anonymous speech. Arista Records, LLC v. Doe 3, 604 F.3d 110, 118 (2d Cir. 2010) (citing Buckley v. American Constitutional Law Foundation, Inc., 525 U.S. 182, (1999)). However, [p]arties may not use the First Amendment to encroach upon the intellectual property rights of others. Sony Music Entm t Inc. v. Does 1-40, 326 F. Supp. 2d 556, 563 (S.D.N.Y. 2004); see also Arista Records, 604 F.3d at 118 ( The First Amendment does not, however, provide a license for copyright infringement. ). Therefore, anonymity is unprotected to the extent that it is used to mask infringement of intellectual property rights. See Arista Records, 604 F.3d at 118. The Second Circuit has recognized a general standard, consisting of five principal factors, for determining whether a motion to quash should be granted in order to preserve an objecting party s anonymity, adopting the standard articulated by Judge Chin in Sony Music. Arista Records, 604 F.3d at 119 (citing Sony Music, 326 F. Supp. 2d ). The five factors to be considered are the following (1) [the] concrete[ness of the plaintiff s] showing of a prima facie claim of actionable harm,... (2) [the] specificity of the discovery request,... (3) the absence of alternative means to obtain the subpoenaed information,... (4) [the] need for the subpoenaed 4

5 Case 113-cv LGS Document 20 Filed 06/26/13 Page 5 of 8 information to advance the claim,... and (5) the [objecting] party s expectation of privacy. Arista Records, 604 F.3d at 119 (quoting Sony Music, 326 F. Supp. 2d ); see also Next Phase Distribution, Inc. v. Does 1-138, No. 11 Civ. 9706, 2012 WL , at *2 (S.D.N.Y. Mar. 1, 2012) (applying the same five-factor test). In the Motion, Defendant urges the Court to apply the five-part standard established in Dendrite v. Doe, 775 A.2d 756 (N.J. App. Ct. 2001), rather than the Sony Music standard. Because the Second Circuit has found that the Sony Music standard constitutes an appropriate general standard for the issue at hand, the Court applies the Sony Music standard rather than the Dendrite standard. Arista Records, 604 F.3d at 119. Although the Sony Music standard was defined in the context of a motion to quash, the Court finds that the standard also applies to the issue of whether Plaintiffs request for expedited discovery should be denied in order to preserve Defendant s anonymity. Here, each of the five factors supports granting Plaintiffs request for expedited discovery. First, Plaintiffs have alleged a prima facie claim for trademark infringement and, therefore, have made a concrete showing of a prima facie claim of actionable harm. Sony Music, 326 F. Supp. 2d at 564. To state a claim for trademark infringement under 15 U.S.C. 1114(1), a plaintiff must allege that the defendant (1) without consent, (2) used in commerce, (3) a reproduction, copy or colorable imitation of plaintiff s registered mark, as part of the sale or distribution of goods or services, and (4) that such a use is likely to cause confusion. Gruner Jahr USA Pub., a Div. of Gruner Jahr Printing & Pub. Co. v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993) (citing 15 U.S.C. 1114(1)(a)). Here, Plaintiffs have alleged that Defendant uses Plaintiffs registered BLOOMBERG mark without consent on blogs and that Defendant s use of the mark is likely to cause confusion. (Compl ). 5

6 Case 113-cv LGS Document 20 Filed 06/26/13 Page 6 of 8 Plaintiffs discovery request is sufficiently specific to establish a reasonable likelihood that the discovery request would lead to identifying information that would allow Plaintiffs to serve Defendant. Sony Music, 326 F. Supp. 2d at 566. Plaintiffs seek information as to Defendant s identity based on IP addresses and associated with Defendant s blogs, times and dates when the blogs were accessed by Defendant and information correlating those times and dates with the IP addresses. The sought information would allow Plaintiffs to serve Defendant. Plaintiffs also have demonstrated the absence of alternative means to obtain the subpoenaed information and have shown that the subpoenaed information is necessary to advance their claims. In the Motion for Expedited Discovery, Plaintiffs stated that the blogs do not provide names or contact information for the Doe Defendants and that Google refused to provide identifying information without a court order. Without ascertaining Defendant s identity, Plaintiffs are unable to serve Defendant and unable to litigate their claims. Finally, the Court finds that Plaintiffs need for the subpoenaed information outweighs Defendant s expectation of privacy and anonymity. Defendant is entitled only to a minimal expectation of privacy in this case, where Plaintiffs have alleged what appear to be meritorious trademark infringement claims and must determine Defendant s identity in order to litigate those claims. Sony Music, 326 F. Supp. 2d at 566 (finding that because the defendants had little expectation of privacy in downloading and distributing copyrighted songs without permission[,] the defendants right to remain anonymous must give way to plaintiffs right to use the judicial process to pursue what appear to be meritorious copyright infringement claims ); see also Arista Records, 604 F.3d at 124 (finding that a defendant s expectation of privacy for sharing copyrighted [materials] through an online file-sharing network [is] insufficient to permit him to 6

7 Case 113-cv LGS Document 20 Filed 06/26/13 Page 7 of 8 avoid having to defend against a claim of copyright infringement ). In sum, consideration of the Sony Music factors establishes that Defendant s First Amendment right to speak anonymously does not outweigh Plaintiffs need to ascertain Defendant s identity for the purpose of litigating the claims alleged in the Complaint. B. Personal Jurisdiction Defendant also requests reconsideration of the May 14 Order on the ground that the Court lacks personal jurisdiction over Defendant. However, a ruling on personal jurisdiction at this stage would be premature. Without the subpoenaed information, the Court has little basis on which to determine personal jurisdiction over Defendant. See Sony Music, 326 F. Supp. 2d at 567 (holding that ruling on personal jurisdiction prior to the plaintiffs discovery of the identities of the anonymous defendants would be premature because, without the identifying information sought by plaintiffs... it would be difficult to assess properly the existence of personal jurisdiction over the Doe defendants ). The Court declines to rule on the existence of personal jurisdiction and denies Defendant s Motion to the extent it challenges personal jurisdiction. C. Motion to Quash Defendant s Motion is denied to the extent it requests the Court to quash the subpoena served on Google. Rule 45(c)(3)(A) provides that the issuing court must quash or modify a subpoena on timely motion in specified circumstances. Fed. R. Civ. P. 43(c)(3)(A). Therefore, any motion to squash a subpoena must be brought in the issuing court. Chevron Corp. v. Donziger, No. 11 Civ. 0691, 2012 WL , at *2 (S.D.N.Y. Dec. 19, 2012); 9 Moore s Federal Practice 45.50[4] (4th ed. 2012) ( [O]nly the issuing court has the power to grant a motion to quash or modify the subpoena. ). Because the subpoena in this case was issued by the 7

8 Case 113-cv LGS Document 20 Filed 06/26/13 Page 8 of 8 United States District Court for the Northern District of California, this Court may not consider Defendant s motion to quash the subpoena. III. CONCLUSION Accordingly, Defendant s Motion is DENIED. The Clerk is directed to close the motion at docket number 15. SO ORDERED Dated June 26, 2013 New York, New York 8