October 20, 2014

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October 20, 2014

October 17, 2014

Georgia is a New Battleground for the Self-Proclaimed “Original Copyright Troll”

Copyright troll.[1]  Extortionist.[2]  Predator.[3]  John Steele has been called many things as he brashly wages a nationwide war against individual IP address owners on behalf of adult video production companies (or purported holders of copyrights in adult video content).  None of the names have deterred him and, in fact, Steele proudly proclaims his status as a copyright troll – defined by one court as “an owner of a valid copyright who brings an infringement action not to be made whole, but rather as a primary or supplemental revenue stream.”[4] 

The essence of Steele’s scheme is this: he (or his agents) tracks IP addresses and monitors for the downloading of his client’s copyrighted material by individuals on BitTorrent® sites.[5]  When Steele’s firm, Steele Hansemeier, PLLC (now Prenda Law Inc.), began this campaign in 2010, it filed suits naming hundreds of John Doe defendants and identifying only the accused IP addresses.  Steele then asked the courts for expedited discovery to subpoena the Internet Service Providers, such as Comcast and Cox Communications, to release the identity of the owners of the accused IP addresses.  Armed with an individual’s identity, Steele would mail a settlement letter offering to drop the suit for $3,000-$4,000.[6]  As courts have observed, the motivation to remain anonymous has prompted many defendants to pay the settlement demand rather than fight the case on the merits.

In recent months, Steele and Prenda Law have shifted from naming numerous John Doe defendants to publicly identifying individuals.  Publishing the names of alleged copyright offenders of adult film downloads in publically filed complaints raises the likelihood of public embarrassment of those who wish their taste in films kept private.  This approach may precede an assertion that there can be no extortion where there is no threat of making the disclosure because it has already been made.  A court might choose to redact the identification of the film names in the complaint (or of the individual defendants) pursuant to Fed. R. Civ. P. 26(c)(1), or strike them from the complaint altogether under Fed. R. Civ. P. 12(f).[7]  Some accused defendants are starting to fight back – challenging joinder, venue, and other procedural aspects of Prenda Law’s cases.  Courts have expressed serious misgivings about the potential for abuse of the judicial process in service of “what seems to be a developing pattern of extortionate settlement demands.”[8]

In the last month, Steele has spread the war into Georgia courts.  Steele’s local Georgia affiliate is Jacques Nazaire, “Of Counsel to Prenda Law Inc.,” according to his signature block.  Since the first filing in early October, Nazaire has filed twenty-four suits in the Northern and Middle Districts of Georgia, all naming one individual defendant, on behalf of various production companies and holding companies.  The suits filed by Nazaire as of counsel are very similar to those filed in other jurisdictions.  Below is a list of the cases filed to date, grouped by entity, none of which have proceeded past the initial filing stage:[9]

  • AF Holdings, LLC

    • 1:2012-cv-03482 (N.D. Ga. Oct. 5, 2012)

    • 1:2012-cv-03542 (N.D. Ga. Oct. 11, 2012)

    • 5:2012-cv-00429 (M.D. Ga. Oct. 27, 2012)

    • 2:2012-cv-00262 (N.D. Ga. Nov. 5, 2012)

    • 2:2012-cv-00263 (N.D. Ga. Nov. 5, 2012)

  • Boy Racer, Inc.

    • 2:2012-cv-00258 (N.D. Ga. Nov. 1, 2012)

    • 3:2012-cv-00160 (N.D. Ga. Nov. 5, 2012)

  • CP Productions, Inc.

    • 1:2012-cv-03557 (N.D. Ga. Oct. 12, 2012)

  • First Time Videos, LLC

    • 1:2012-cv-03578 (N.D. Ga. Oct. 15, 2012)

    • 1:2012-cv-03665 (N.D. Ga. Oct. 20, 2012)

    • 1:2012-cv-03772 (N.D. Ga. Oct. 27, 2012)

    • 1:2012-cv-03773 (N.D. Ga. Oct. 27, 2012)

    • 2:2012-cv-00259 (N.D. Ga. Nov. 1, 2012)

    • 1:2012-cv-03839 (N.D. Ga. Nov. 5, 2012)

  • Sunlust Pictures, LLC

    • 1:2012-cv-00166 (M.D. Ga. Nov. 1, 2012)

    • 3:2012-cv-00143 (M.D. Ga. Nov. 1, 2012)

    • 3:2012-cv-00144 (M.D. Ga. Nov. 2, 2012)

    • 1:2012-cv-03838 (N.D. Ga. Nov. 5, 2012)

  • Quad Int’l, Inc.

    • 1:2012-cv-03645 (N.D. Ga. Oct. 19, 2012)

    • 1:2012-cv-03646 (N.D. Ga. Oct. 19, 2012)

    • 1:2012-cv-03647 (N.D. Ga. Oct. 19, 2012)

    • 1:2012-cv-03648 (N.D. Ga. Oct. 19, 2012)

  • Millennium TGA, Inc.

    • 1:2012-cv-03771 (N.D. Ga. Oct. 27, 2012) 

Can Steele and Prenda Law long maintain this onslaught before the judges of the Northern and Middle Districts tire of their tactics?  Will any of the individually-named defendants fight back the way defendants are doing in other jurisdictions?  Will any special interest groups urge Congress to get involved to stem this trend?  There are many questions to be answered, and we will keep our eyes on how this plays out over the coming months.

For more information, a round-up of related links from various online sources is below:

Electronic Frontier Foundation

JDSupra

Torrent Lawyer

Tech Dirt

Fight Copyright Trolls

Fight Copyright Trolls (2)

Business Insider

Forbes

Philly Law Blog


[1] http://www.forbes.com/sites/kashmirhill/2012/10/15/how-porn-copyright-lawyer-john-steele-justifies-his-pursuit-of-sometimes-innocent-porn-pirates/

[2] https://torrentlawyer.wordpress.com/2012/08/01/at-what-point-does-a-copyright-troll-stop-being-a-troll/

[3] http://fightcopyrighttrolls.com/2012/06/

[4] Third Degree Films v. Does 1-47, Case No. 12-10761 (D. Mass. Oct. 2, 2012).

[5] BitTorrent is a peer-to-peer (P2P) protocol that allows for file sharing and distributing large amounts of data over the Internet.

[6] Statutory damages for copyright infringement of a single work range from $750 to $30,000 in the discretion of the court.  17 U.S.C. § 504(c).

[7] "The court may, for good cause, issue an order to protect a party from annoyance, embarrassment, oppression, or undue burden or expense . . . ."  Fed. R. Civ. P. 26(c)(1) (emphasis added).  "The court may strike from a pleading ... any redundant, immaterial, impertinent, or scandalous matter." Fed. R. Civ. P. 12(f).

[8] Third Degree Films v. Does 1-47, Case No. 12-10761 (D. Mass. Oct. 2, 2012).  “While it is without question that a valid copyright holder is entitled to seek protection of its intellectual property in federal court, it appears that in at least some of these cases, adult film companies may be misusing the subpoena powers of the court, seeking the identities of the Doe defendants solely to facilitate demand letters and coerce settlement, rather than ultimately serve process and litigate the claims. And while it is true that every defendant to a lawsuit must assess reputational costs in his or her determination of whether to settle or defend an action, the potential for embarrassment in being publicly named as allegedly infringing such salacious works as “Big Butt Oil Orgy 2” or “Illegal Ass 2” may be playing a markedly influential role in encouraging a myriad of Doe defendants to settle once subpoenas are issued—a bargaining chip the adult film companies appear to well understand.”  Id.

[9] We have refrained from listing any of the named defendants out of respect for their privacy – this site is cached by Google and other search engines, whereas PACER is not.  This fact illustrates an incentive for accused infringers to settle before their case “makes the papers” or the cached Internet.

Copyright © 2014 Womble Carlyle Sandridge & Rice, PLLC. All Rights Reserved.

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About this Author

Preston H Heard, Womble Carlyle Law Firm, Intellectual Property Attorney
Partner

Preston Heard is an experienced patent litigation attorney who represents clients in a variety of industries, including the mechanical, computer and chemical sectors, in patent-related disputes.

 A registered patent attorney, Preston has represented patent clients in U.S. District Court in numerous states, as well as before the U.S. International Trade Commission. He works with patent owners to devise overall strategies to protect and enforce patent rights and to assess potential patent-related claims. He also works with clients to develop effective defenses against patent...

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