Pacific Bell Internet Services Sues RIAA Over Infringer Subpoenas

July 30, 2003. Pacific Bell Internet Services (PBIS) filed a complaint in U.S. District Court (NDCal) against the Recording Industry Association of America (RIAA) seeking declaratory and injunctive relief regarding the validity of subpoenas issued by the U.S. District Court (DC), pursuant to Section 512 of the DMCA, that directs ISPs to provide information about subscribers alleged to be engaging in P2P copyright infringement over the ISPs' networks. The complaint argues many of the issues raised by Verizon in a case in the District of Columbia. (Verizon lost on these issues.) The complaint also raises issues regarding the form of the subpoenas, the manner in which they are served, and whether the recipient is entitled to compensation for compliance.

Background. The RIAA represents music companies whose copyrights are being infringed by people using peer to peer file sharing systems. The RIAA possesses only Internet Protocol (IP) number information on infringers. This does not reveal the identity of the infringers. However, internet service providers, which provide internet access for the P2P infringers, possess information that would associate subscriber information with IP number information. That is, by obtaining the ISP's information, the RIAA, or its members, would be able to file complaints alleging infringement against the individual infringers. The RIAA cannot sue these ISPs for infringement, because of the safe harbor provisions of the Digital Millennium Copyright Act (DMCA).

The RIAA has obtained numerous subpoenas from the Clerk of the Court of the U.S. District Court for the District of Columbia, pursuant to § 512(h), and served them upon many ISPs. In August of 2002, Verizon filed a complaint in the District Court challenging some of the first of these subpoenas. This matter has been thoroughly litigated in the District of Columbia, the RIAA has prevailed in the District Court, and the Appeals Court has declined to issue a stay.

See, stories titled "RIAA Seeks to Enforce Subpoena to Identify Anonymous Infringer" in TLJ Daily E-Mail Alert No. 499, August 27, 2002; "Verizon and Privacy Groups Oppose RIAA Subpoena" in TLJ Daily E-Mail Alert No. 501, September 4, 2002; "District Court Rules DMCA Subpoenas Available for P2P Infringers" in TLJ Daily E-Mail Alert No. 588, January 22, 2003; "Law Professor Submits Apocalyptic Declaration in RIAA v. Verizon" in TLJ Daily E-Mail Alert No. 596, February 3, 2003; "DOJ Files Brief in Support of RIAA in Verizon Subpoena Matter" in TLJ Daily E-Mail Alert No. 646, April 22, 2002; "District Court Rules That A DMCA § 512(h) Subpoena for the Identity of an P2P Infringer Does not Violate the Constitution" in TLJ Daily E-Mail Alert No. 649, April 25, 2003; and "Court of Appeals Denies Stay in RIAA v. Verizon" in TLJ Daily E-Mail Alert No. 674, June 5, 2003.

Much of the PBIS's complaint essentially seeks to relitigate issues already decided by the District of Columbia Court. Of course, the District Court for the Northern District of California is not bound by the opinion of the District Court for the District of Columbia.

However, the PBIS also raises several new issues regarding the form of subpoenas, the manner in which they are served, and whether the recipient is entitled to compensation for compliance.

Statute. § 512 provides ISPs a safe harbor from liability for infringement based on the activities of their users. There are four specific limitations on liability. § 512(a) pertains to "transmitting, routing, or providing connections for, material through a system or network controlled or operated by or for the service provider, or by reason of the intermediate and transient storage of that material in the course of such transmitting, routing, or providing connections". § 512(b) pertains to "the intermediate and temporary storage of material on a system or network". § 512(c) pertains to "material that resides on a system or network controlled or operated by or for the service provider". And, § 512(d) pertains to "referring or linking users to an online location containing infringing material or infringing activity, by using information location tools, including a directory, index, reference, pointer, or hypertext link".

Subsection 512(h) then provides, in part, that "A copyright owner or a person authorized to act on the owner's behalf may request the clerk of any United States district court to issue a subpoena to a service provider for identification of an alleged infringer in accordance with this subsection." The statute then provides that the requester should also provide a copy of the 512(c)(3) notice, a proposed subpoena, and a sworn declaration.

Subsection 512(h)(5) then provides, in part, that "Upon receipt of the issued subpoena, ... the service provider shall expeditiously disclose to the copyright owner or person authorized by the copyright owner the information required by the subpoena, notwithstanding any other provision of law and regardless of whether the service provider responds to the notification."

Conduit Functions. The District Court (DC) previously held that copyright holders can obtain subpoenas pursuant to § 512(h) that require ISPs to reveal the identities of their customers who infringe copyrights on peer to peer filing sharing systems. Verizon had argued in the District Court (DC), unsuccessfully, that Section 512(h) subpoenas are only available with respect to infringers who stored infringing content on the servers of the ISP

In the present case, PBIS argues that "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)."

Issuance of Subpoenas in the Absence of a Case. The District Court (DC) previously held that that issuance of the DMCA subpoena does not violate the justiciability requirements of Article III by authorizing federal courts to issue binding judicial process outside a pending case or controversy.

In the present case, PBIS argues that "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."

Free Speech Rights. The District Court (DC) previously held that the issuance of a DMCA subpoena does not violate the First Amendment. It wrote that "Section 512(h) merely allows a private copyright owner to obtain the identity of an alleged copyright infringer in order to protect constitutionally recognized rights in creative works; it does not even directly seek or restrain the underlying expression (the sharing of copyrighted material). Thus, the DMCA does not regulate protected expression or otherwise permit prior restraint of protected speech. It only requires production of the identity of one who has engaged in unprotected conduct -- sharing copyrighted material on the Internet." (Parentheses in original.)

In the present case, PBIS argues that "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."

Form and Service of Subpoenas. The PBIS complaint goes into considerable detail on the technical elements of the subpoenas, including the entity named in the subpoenas, the address at which they were served, the manner in which they were served, and the District Court which issued the subpoenas. The complaint alleges that various subpoenas are defective for various technical reasons. The fourth and fifth counts of PBIS's complaint raise a number of issues under the DMCA and Rule 45 of the Federal Rule of Civil Procedure

For example, the complaint states that "Pacific Bell Internet Services" (PBIS), which is the plaintiff in this case, is a California corporation, with its principal place of business in San Francisco, California. The complaint states that PBIS provides Internet access services and high-speed Internet connections to its subscribers. It further states that some of the subpoenas ask for information about PBIS subscribers.

The complaint further states that "SBC Internet Communications, Inc.", which is named in many of the RIAA's subpoenas, is a holding company that does not provide Internet access services, and does not have the required custody and control over the subscriber information sought by the subpoenas. The complaint states that SBC Internet Communications, Inc. is not a "service provider" within the meaning of term as used in 17 U.S.C. § 512.

Thus, PBIS argues that these subpoenas are defective because they name the wrong party.

Similarly, the RIAA served many subpoenas in San Antonio, Texas, the principal place of business of SBC Communications, Inc. and SBC Internet Communications, Inc. PBIS argues that these subpoenas should have been served in San Francisco, where PBIS is located.

PBIS also argues that subpoenas are defective under Rule 45. This rule provides, in part, that "a subpoena may be served at any place within the district of the court by which it is issued, or at any place without the district that is within 100 miles of the place of the deposition, hearing, trial, production, or inspection specified in the subpoena or at any place within the state where a state statute or rule of court permits service of a subpoena issued by a state court of general jurisdiction sitting in the place of the deposition, hearing, trial, production, or inspection specified in the subpoena."

PBIS points out, for example, that San Antonio, which is where many subpoenas were served, is more than 100 from Washington DC, where the subpoenas were issued. It further points out that service in San Francisco is also outside the 100 mile limit.

PBIS's statements in its complaint regarding service are inconsistent with statements that it has made to the U.S. Copyright Office. For example, on June 11, 2003 "SBC Internet Communications, Inc." filed a document [PDF] with the Copyright Office titled "Amended Interim Designation of Agent to Receive Notification of Claimed Infringement". In this document, "SBC Internet Communications, Inc." lists itself as a "service provider". In this document "SBC Internet Communications, Inc." further lists "Pacific Bell Internet Services" in the category of "Alternative Name(s) of Service Provider (including all names under which the service provider is doing business)". Finally, this document states that service should be made in San Antonio, Texas upon the General Counsel of "SBC Internet Communications, Inc."

However, whatever the disposition of these claims turns out to be, these claims are at best delaying tactics. The RIAA can obtain new subpoenas, and obtain service in a manner that satisfies any requirements imposed by the Court.

Compensation for Compliance. However, PBIS's claim regarding compensation may have long term ramifications.

PBIS states in its complaint that "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."

PBIS concludes 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."

Subsection 512(h) of the DMCA provides that "the procedure for issuance and delivery of the subpoena, and the remedies for noncompliance with the subpoena, shall be governed to the greatest extent practicable by those provisions of the Federal Rules of Civil Procedure governing the issuance, service, and enforcement of a subpoena duces tecum." This subsection does not establish a blanket rule that Rule 45 applies. Rather, it enumerate situations in which Rule 45 does apply, such as "issuance" and "delivery". It does not enumerate "procedure for compliance" or "compensation".

The District Court's stamps on the complaint indicate that the case has been assigned the number C 03 3560 JL. JL is a reference to Magistrate Judge James Larson.

PBIS is represented by the law firm of Kekker & Van Nest. The complaint was signed by Ragesh Tangri. The complaint also lists as counsel Mark Lemley. He is of counsel to the firm, and a professor of law at Boalt Hall School of Law, at the University of California at Berkeley.