KEKER & VAN NEST, LLP
RAGESH K. TANGRI - #159477
MICHAEL H. PAGE - #154913
MARK A. LEMLEY - #155830
MICHAEL S. KWUN - #198945
710 Sansome Street
San Francisco, CA 94111-1704
Telephone: (415) 391-5400
Facsimile: (415) 397-7188

Attorneys for Plaintiff
PACIFIC BELL INTERNET SERVICES
 

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

INTRODUCTION

24. One method PBIS subscribers can use to engage in such transmissions is to use "peer-to-peer" file sharing programs such as eDonkey, KaZaA, or Gnutella. When using such programs, end users control the content, storage, and destination of their communications. When PBIS's subscribers send or receive files using peer-to-peer file sharing programs, PBIS is acting in the "conduit" capacity described in 17 U.S.C. § 512(a). It does not initiate or direct the transmission of those files and has no control over their content or destination. PBIS carries out such requested transmission through an automatic technical process in which PBIS neither selects the material that is sent or received by the subscribers nor selects the recipients or senders of the material. The files do not reside on the network or systems of PBIS, rather they reside on the personal computers, private networks, or other information storage devices under the control of the subscribers themselves.

25. When PBIS subscribers received any material from, or transmitted any material to, another Internet user using KaZaA, Gnutella, eDonkey, or any other peer-to-peer software, (a) PBIS did not cache or otherwise perform any intermediate or temporary storage of the material being transmitted on a system or network controlled or operated by or for PBIS; (b) PBIS did not otherwise store on its system or network any of the transmitted materials; and
(c) PHIS did not refer, point, or provide a link to any online location through the use of any information location tools.

C. The Subpoenas and DMCA Notices

26. On July 8, 2003, RIAA served a subpoena, purportedly issued pursuant to 17 U.S.C. § 512(h), on PBIS. That subpoena, which was issued by the Clerk for the United States District Court for the District of Columbia and bears the docket number 1:03MS00232 (D.D.C), is attached hereto as Exhibit 1. Although issued from the District Court for the District of Columbia, the subpoena was in fact addressed to PHIS's office in San Francisco and the subpoena was served in San Francisco, California on PBIS. PHIS served an objection letter upon RIAA regarding this subpoena.

27. The subpoena purports to require PBIS to identify one Internet subscriber at a designated IP address, who is asserted to have used a peer-to-peer functionality known as "KaZaA" to offer copyrighted materials over the Internet.

28. On July 9, 2003, Titan sent a subpoena, purportedly issued pursuant to 17 U.S.C. § 512(h), to PBIS. A copy of the subpoena, docketed by the Clerk as N.D. Cal. miscellaneous matter CV 03-065 MISC JSW, is attached hereto as Exhibit 2. A copy of the Declaration of D. Gill Sperlein in support of Titan's request for a subpoena is attached hereto as Exhibit 3. Titan sent the subpoena by overnight mail to an administrative office in San Antonio, Texas.

29. The Titan subpoena purports to require production of "(a)ny and all information identifying the subscribers assigned the ip addresses at the corresponding time of infringement as listed in Attachments A and B of the accompanying Declaration of Gill Sperlein, including but not limited to names, addresses, phone numbers, and e-mail addresses.

30. The attachments to the Sperlein Declaration purport to identify 96 acts of asserted copyright infringement by PBIS subscribers. The asserted acts of infringement are identified as involving use of peer-to-peer file sharing programs at 59 different IP addresses. In many cases, a subscriber is asserted to have engaged in a single instance of infringement involving one digital file.

31. PBIS personnel would have to engage in a burdensome search and verification process to comply with these subpoenas, including searches of dynamic IP address assignment tapes and subscriber lists.

32. Neither RIAA nor Titan tendered any payment to compensate PBIS for costs incurred responding to these subpoenas.

33. To date, RIAA has not responded to PBIS' objection letter and, when notified on July 22, 2003 that PBIS intended to challenge the Titan subpoena, Titan withdrew its subpoena. Titan did not, however, agree that it would forbear from serving PBIS with such subpoenas in the future. Moreover, on July 22, 2003, Titan sent an additional DMCA notice concerning supposed peer-to-peer file sharing activity by a PBIS subscriber. A true and correct copy of the July 22 2003 notice is attached hereto as Exhibit 4.

34. On information and belief, on July 18, 2003 , RIAA purportedly served 97 subpoenas, each purportedly issued pursuant to 17 U.S.C. § 512(h), on "SBC," which is not a corporate entity but is a registered trademark used by numerous corporate entities. Each of these 97 subpoenas was issued by the United States District Court for the District of Columbia and addressed to "SBC, 300 Convent Street, 18th Floor, San Antonio, TX 78205." An exemplar of one of these subpoenas and the documents that accompanied them is attached hereto as Exhibit
5. Each of these 97 subpoenas pertains to a subscriber's asserted use of a peer-to-peer functionality to exchange digital files. These 97 subpoenas were "served" by dropping the subpoenas off with a receptionist at a Washington D.C. office of SBC Telecommunications, Inc. an affiliate of PBIS. The affiliate company is not a service provider under the DMCA. PBIS has not yet verified all the facts in connection with the putative service of many of these subpoenas since they were served on entities that do not exist or employees of entities that are not "service
providers." PBIS reserves the right to present additional claims regarding these subpoenas upon further factual inquiry.

35. Of these 97 subpoenas, 69 request that "SBC" identify subscribers using IP addressed registered to PBIS. The remaining subpoenas request that "SBC" identify subscribers to other Internet services affiliated with SBC Communications Inc.

36. On July 23, 2003, RIAA served 53 subpoenas, each purportedly issued pursuant to 17 U.S.C. § 512(h), on "SBC" which is not a corporate entity but is a registered trademark used by numerous corporate entities. Each of these 53 subpoenas was issued by the United States District Court for the District of Columbia and addressed to "SBC, 300 Convent Street 18th Floor, San Antonio, TX 78205." An exemplar of one of these subpoenas and the documents that accompanied them is attached hereto as Exhibit 6. Each of these 53 subpoenas pertains to a subscriber's asserted use of a peer-to-peer functionality to exchange digital files. Again, these subpoenas were "served" by leaving them at the Washington D.C. office of SBC Telecommunications, Inc., a PBIS affiliate but not a service provider under the DMCA. Of these 53 subpoenas, 37 request that "SBC" identify subscribers using IP addressed registered to PBIS. Many of those IP addresses were issued to California residents at the times specified in the subpoenas. The remaining subpoenas request that "SBC" identify subscribers to other Internet services affiliated with SBC Communications, Inc.

37. The RIAA attempted to serve some, but not all, of the RIAA subpoenas in San Antonio, Texas, at an address that is not the address of the registered DMCA agent for PBIS or any of its affiliates. Upon such attempted service, the RIAA's process server was informed that there is no legal entity named "SBC" and that service of a subpoena issued by the District Court for the District of Columbia in San Antonio, Texas was improper.

38. RIAA has the ability to perform a very short, simple search on a public web-site to identify the correct ISP from which to seek information about a particular IP address. By not naming the correct entity and, in contrast, naming a trademark instead of an actual legal entity, RIAA has unreasonably refused to perform even the most basic due diligence in support of its issuance of purportedly binding legal process.

39. Although 37 of these subpoenas sought the identities of customers of PBIS, they were not issued from this Court (the Court in the District in which PBIS is located), they were not addressed to PBIS, and they were not served at PBIS's offices. Instead, they were addressed to "SBC" (which is a trademark, not a corporate entity), and served by delivery to the Washington D.C. office of SBC Telecommunications, Inc., a PBIS affiliate but not a service provider within the meaning of the term as used in 17 U.S.C. § 512. SBC Telecommunications Inc. does not provide any of the Internet access services referred to in the subpoenas and does not have the required custody and control of the subscriber information at issue.

40. On July 24 and 25 2003, RIAA served 57 additional subpoenas, each purportedly issued pursuant to 17 U.S.C. § 512(h), on "SBC Internet Communications, Inc." Each of these 57 subpoenas was issued by the United States District Court for the District of Columbia and addressed to "SBC Internet Communications, Inc. c/o SBC, 1401 I Street, N.W., Suite 1100, Washington, DC 20005." An exemplar of one of these subpoenas and the documents that accompanied them is attached hereto as Exhibit 7. Each of these 57 subpoenas pertains to a subscriber's asserted use of a peer-to-peer functionality to exchange digital files.

41. Of these 57 subpoenas, 33 request information pertaining to IP addresses registered to PBIS. The remaining 24 subpoenas request that "SBC Internet Communications Inc." identify subscribers to other Internet services affiliated with SBC Communications Inc. SBC Internet Communications, Inc. is a Delaware company with its principal place of business in San Antonio, Texas. SBC Internet Communications, Inc. is a holding company, does not provide Internet access services, and does not have the required custody and control over the subscriber information sought by the subpoenas. SBC Internet Communications, Inc. is not a "service provider" within the meaning of term as used in 17 U.S.C. § 512.

42. Although the subpoenas seek the identities of California customers of PBIS, they were not issued from this Court (the court in the district in which PBIS is located), they were not addressed to PBIS, and they were not served at PBIS's offices. Instead, they were addressed to "SBC Internet Communications, Inc." which is not an ISP and were served on an employee of SBC Management Services, L.P. in Washington, D.C.

43. PBIS personnel would have to engage in a burdensome search and verification process to comply with all of these subpoenas, including searches of dynamic IP address assignment tapes and subscriber lists.

44. RlAA did not tender any payment to compensate PBIS for costs incurred responding to any of these subpoenas.

45. PBIS served an objection letter on RIAA in regard to the July 18, 23 , 24 & 25, 2003 subpoenas referenced herein.

46. On information and belief, MediaForce is a kind of copyright "bounty hunter." It employs automatic search engines (robots or "bots") to search the Internet for specific word combinations that it believes suggest the presence of copyrighted materials. Its corporate description indicates that it "track(s) all popular distribution mediums including P2P networks IRC, FTP sites, auction sites, newsgroups, and web sites."' In 2002, PBIS and its affiliated Internet service providers received more than 16,700 DMCA notices from MediaForce alone. The vast majority of these notices are not proper in that they are related to conduit functions over which PBIS has no control because the complained-of files reside on the user's computer rather than on PBIS network or systems. PBIS or its affiliated providers have received such improper notices from MediaForce at least as recently as July 25, 2003. PBIS has sent MediaForce numerous letters indicating that such notices are improper in the Section 512(a) context and are of no force or effect. An exemplar of such letters is attached hereto as Exhibit 8. The continuing stream of improper 17 U.S.C. § 512 notifications places a substantial burden on PBIS. Further, if MediaForce converts even a small percentage of the improper notices into subpoenas under the purported authority of 17 U.S.C. § 512(h), PBIS will be overwhelmed with such requests.

47. Each of the RIAA and Titan subpoenas referred to in this Complaint purports to require PBIS to provide an e-mail address for its subscriber. Even if the subpoenas were otherwise valid, 17 U.S.C. § 512(h)(3) authorizes a subpoena only for "information sufficient to identify the alleged infringer." An electronic mail address may have no relation to a subscriber identity and many PBIS subscribers choose to use e-mail addresses provided by services other than PBIS. The statute does not authorize this demand, and the disclosure of e-mail addresses, to the extent they are accurate, would constitute an additional and unauthorized invasion of subscriber privacy.

48. Each of the RIAA and Titan subpoenas referred to in this Complaint purports to require compliance in less than 14 days from service of the subpoenas. This allows insufficient time for PBIS to notify the subscribers whose personal and confidential information is sought and allow the subscribers a meaningful opportunity to context the disclosure of their personal information in court.

CLAIMS FOR RELIEF

Claim One
(Declaratory Relief under the DMCA)

49. PBIS incorporates by reference the allegations contained in paragraphs 1 through 48, inclusive.

50. Defendants RIAA and Titan have served PBIS and other subsidiaries of PBIS' parent company with subpoenas seeking information identifying PBIS subscribers based on their asserted "good faith belief" that PBIS subscribers may be using peer-to-peer filing sharing programs to engage in unauthorized use of copyrighted material. Defendant MediaForce has sent PBIS thousands of purported DMCA notices thereby imposing a substantial burden on PBIS and creating a reasonable apprehension that MediaForce will begin to serve improper subpoenas.

51. The DMCA does not authorize the issuance of subpoenas or DMCA notices to a service provider such as PBIS based on services it provides when performing the "conduit" functions described in 17 U.S.C. § 512(a).

52. No other provision of law authorizes the issuance of these subpoenas.

53. Defendants' conduct has injured and threatens to continue to injure PBIS by forcing it to devote substantial resources to responding to DMCA notices that have already been sent, the subpoenas that have already been served, and those that PBIS has a reasonable apprehension will be sent and/or served.

54. Based on Defendants' conduct to date, PBIS's continued plan to provide Internet access to its subscribers, and the popularity of peer-to-peer file sharing software among Internet users generally, PBIS has a reasonable apprehension that Defendants will serve it with additional notices and/or subpoenas, issued under the purported authority of the DMCA. The service such additional DMCA notices and/or subpoenas threatens to injure PBIS by forcing it to devote substantial resources to responding to such additional DMCA notices and/or subpoenas. The service of such subpoenas also threatens to injure PBIS's goodwill with its subscribers and threatens its subscribers' rights to privacy and to free expression and association on the Internet.

55. An actual, present, and justiciable controversy has arisen between PBIS and Defendants concerning whether the DMCA authorizes the issuance of DMCA notices and/or subpoenas to service providers such as PBIS based on their provision of Transitory Digital Network Communications as defined in 17 U.S.C. § 512(a).

56. PBIS seeks declaratory judgment from this Court that the DMCA does not authorize the issuance of subpoenas to service providers such as PBIS based on their provision of conduit services described in 17 U.S.C. § 512(a).

57. PBIS also seeks a declaration from this Court that the DMCA does not authorize the service of DMCA notices or demands in the context of conduit functions defined in 17 U.S.C. § 512(a) and that such notices are improper and of no legal effect.

Claim Two
(Declaratory Relief under Article III of the U.S. Constitution)

58. PBIS incorporates by reference the allegations contained in paragraphs 1 through 57, inclusive.

59. Issuance and enforcement of a subpoena pursuant to the DMCA seeking information identifying the customers of a service provider such as PBIS, in the absence of a pending case or controversy arising under federal law, violates Article III of the Constitution.

60. An actual, present and justiciable controversy has arisen between PBIS and Defendants concerning the constitutionality of the provisions of the DMCA that Defendants' contend authorize the issuance and enforcement of judicial subpoenas outside the context of a pending case of controversy within the jurisdiction of the federal courts.

61. PBIS asks the Court to declare that the subpoena power contained in 17 U.S.C. § 512(h) is limited to judicial process issued and enforced in aid of a pending lawsuit under the Copyright Act.

Claim Three
(Declaratory Relief under the First and Fifth Amendments of the U.S. Constitution)

62. PBIS incorporates by reference the allegations contained in paragraphs 1 through 61, inclusive.

63. Issuance and enforcement of a subpoena seeking information identifying the customers of a service provider such as PBIS violates the rights guaranteed to PBIS subscribers by the First Amendment and the Due Process Clause of the Fifth Amendment of the United States Constitution. The statute does not contain adequate procedural safeguards to protect the expressive and associational rights or the liberty interests of Internet subscribers. It does not provide for notice to the individual subscriber or an opportunity to be heard, and unconstitutionally shifts the burden to PBIS to defend the presumptively protected speech of its subscribers. PBIS is entitled to raise the constitutional rights of its subscribers because of, inter alia, the close relationship between PBIS and it subscribers, because injury to PBIS's subscribers also causes concrete injury to PBIS, because PBIS's subscribers are unable to properly raise their own rights, and because of the substantial overbreadth problems caused by the subpoena provision at issue.

64. Application of the subpoena provision contained in 47 U.S.C. § 512(h) to instances where PBIS acts as a mere conduit for the otherwise private and anonymous e-mail web browsing, file-sharing and other communications of its subscribers, violates the First Amendment and the Due Process Clause of the Fifth Amendment.

65. An actual, present and justiciable controversy has arisen between PBIS and Defendants concerning the constitutionality of the provisions of the DMCA that Defendants contend authorize the issuance and enforcement of subpoenas to service providers when performing the conduit functions described in 17 U.S.C. § 512(a).

66. PBIS seeks declaratory judgment from this Court that the provisions of the DMCA authorizing the issuance of subpoenas to service providers performing pure conduit functions for the private communications of their subscribers are unconstitutional.

Claim Four
(Declaratory Relief under the DMCA and the Fifth Amendment of the Constitution)

67. PBIS incorporates by reference the allegations contained in paragraphs 1 through 66, inclusive.

68. Notwithstanding that PBIS is headquartered in this district, the subpoenas served by RlAA on July 8, 18 , and 25 , 2003 purporting to require disclosure of the identity of PBIS subscribers were issued by the United States District Court for the District of Columbia. With the exception of the single July 8, 2003 subpoena, the subpoenas have not been served on PBIS at its offices in San Francisco, but instead have been served on employees of various subsidiaries of PBIS's parent company in Washington, D.C.

69. Section 512(h)(6) specifies that "procedures for the issuance and delivery of the subpoena" shall be governed by Fed. R. Civ. P. 45 "unless otherwise provided by this section. Fed. R. Civ. P. 45(a)(2) requires that a subpoena for production or inspection only issue from the district in which production is to be made, and Fed. R. Civ. P. 45(b)(2) requires that a subpoena be served within the district or within 100 miles of the place of production or inspection specified in the subpoena. Each of the RIAA subpoenas demands production in Washington, but PBIS -- the only potentially proper recipient of RIAA' s subpoenas -- is not located within 100 miles of Washington, D.C. Thus, with regard to the July 18, 23, 24 and July 25 subpoenas, RIAA has named and served the wrong party in order evade the jurisdictional and service requirements of Rule 45. Moreover, the July 8 subpoena was improperly served in that it was delivered to San Francisco, California, which is more than 100 miles from Washington, D.C.

70. PBIS is a California corporation with its principal place of business in San Francisco, California. It lacks the necessary "minimum contacts" with the District of Columbia with regard to the transactions at issue -- i.e., the provision of Internet service to certain subscribers. Under the Due Process Clause of the Fifth Amendment, PBIS cannot be subject to the jurisdiction of the courts of the District of Columbia.

71. The statute at issue, 17 U.S.C. § 512(h) allows only for the issuance, service, and compliance with a subpoena by a "service provider." That term is defined by 17 U.S.C. § 512(k). Neither "SBC" nor "SBC Internet Communications, Inc." is a "service provider" as that statutory term is used in the DMCA. Thus, the issuance and service of, and demand for compliance with, DMCA subpoenas by these entities that are not service providers is not authorized by the statute.

72. For at least the foregoing reasons, the United States District Court for the District of Columbia is not the proper jurisdiction for the issuance of subpoenas to PBIS and issuance and service of those subpoenas to entities that are not service providers under the statute is improper.

73. An actual, present and justiciable controversy has arisen between PBIS and Defendant RIAA concerning the proper court for issuance of subpoenas pursuant to Section 512(h), the proper place for service of such subpoenas, and the entities that may properly be served with and required to comply with such subpoenas. In the past three weeks, RIAA has served over 120 such subpoenas requesting the identity of PBIS subscribers that have been issued by the United States District Court for the District of Columbia and served in either Washington, D.C. or San Francisco, California.

74. PBIS seeks declaratory judgment from this Court as against Defendant RIAA that any subpoena seeking the identity of a PBIS subscriber be issued from the district in which PBIS is located (the Northern District of California) and personally served upon a proper custodian of records for PBIS, not any other corporate entity.

75. PBIS also seeks a declaration from this Court as to all Defendants that each subpoena is overbroad and unauthorized by statute to the extent it purports to require the production of the subscriber's personal e-mail address.

76. PBIS also seeks a declaration from this Court as to all Defendants that adequate time must be allowed for notice to its subscribers and a meaningful opportunity for those subscribers to be heard in court prior to release of personal identifying data.

77. PBIS also seeks a declaration from this Court as to Defendant Titan that the statute at issue, 17 U.S.C. § 512(h) does not authorize the issuance of a single subpoena containing multiple demands for subscriber identification.

Claim Five
(Declaratory Relief under the DMCA and Fed. R. Civ. P. 45)

78. PBIS incorporates by reference the allegations contained in paragraphs 1 through 77, inclusive.

79. Section 512(h)(6) provides that Rule 45 shall govern the issuance and delivery of subpoenas to the greatest extent practicable.

80. Under Fed. R. Civ. P. 45(c)(3)(B)(iii), the proponent of a subpoena must "reasonably compensate[]" the recipient of a subpoena for its expenses. Similarly, Fed. R. Civ.  P. 45(c)(2)(B) provides that the Court "shall protect any person any person who is not a party or an officer of a party from significant expense resulting from the inspection and copying commanded." Defendants have made no provision to compensate PBIS for responding to the subpoenas issued pursuant to the purported authority of the DMCA. The subpoenas therefore fail to comply with Fed. R. Civ. P. 45.

81. An actual, present and justiciable controversy has arisen between PBIS and Defendants concerning the compensation of service providers for compliance with these DMCA subpoenas.

82. PBIS seeks declaratory judgment from this Court that PBIS must be compensated for any compliance with subpoenas issued under the DMCA and, in the alternative, that if the provisions of the DMCA do not require compensation of recipients of subpoenas, then those provisions are unconstitutional.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Pacific Bell Internet Services accordingly requests that the Court:

1. Enter judgment according to the declaratory relief sought as against each Defendant;

2. Award Plaintiff its costs in this action;

3. Award Plaintiff its attorney s fees in this action, and

4. Enter such other further relief to which Plaintiff may be entitled as a matter of law or equity, or which the Court determines to be just and proper.

DEMAND FOR JURY TRIAL

Pursuant to Federal Rule of Civil Procedure 38 and Civil Local Rule 3-6, Plaintiff Pacific Bell Internet Services hereby demands a jury trial on all issues so triable.