512(h) DMCA Subpoena

Recently I took a dive into the murky waters associated with a “DMCA subpoena” or a subpoena pursuant to 17 U.S.C. § 512(h), only to end up in the same spot I started from: nowhere.  My ordeal may be viewed in PACER under 15-mc-00654.

This particular case is related to a Facebook User ID involved with an (alleged) act of infringement against a photographer client and his copyright material.  Though the Page associated with, and presumably “owned by”, the User ID provides contact information associated with a related entity, all attempts to contact the entity were to no avail.

As a result, my Client was forced to consider alternative options to determine the identity of the alleged infringer associated with the Page/User ID, leading to the unenviable task of trying to sort out how to obtain infringer information pursuant to a DMCA subpoena.

The case law and legal precedent associated with § 512(h) are sparse at best.  This stems from a litany of cases in the early 2000’s, ultimately culminating in the opinion (and others like it) of Recording Indus. Ass'n of Am., Inc. v. Verizon Internet Servs., Inc. that more or less curbed the use of a DMCA subpoena.[1]  Verizon and its progeny stand for the notion that, upon statutory construction, § 512(h) does not apply to service providers providing functionality falling under § 512(a) safe harbor (i.e., communications that are transitory in nature or that the ISP is a mere 'conduit’ for data transmission).

Without going into extensive analysis, the simplified explanation for such cases is that: an initially filed DMCA Subpoena request requires an accompanying § 512(c) DMCA Notice; as § 512(c) has no relevance to § 512(a), it follows that a party/person trying to obtain a DMCA Subpoena can never satisfy the requisite request requirements – or rather, that a DMCA Notice can never properly or sufficiently identify where the infringing material is stored because under § 512(a) information or material is not ‘stored’; it is transitory.

As a result of Verizon and related, copyright owners seeking infringer identification for acts falling under § 512(a) now file a “Doe” lawsuit, obtain permission from a court for pre-litigation discovery, and then issue Rule 45 subpoenas for the needed information to a service provider.  Such cases often involve suit against 100’s, 1000’s, and in some instances, 10,000’s of unknown parties.[2]

But what about a DMCA subpoena related to service providers providing functionality that falls under § 512(c)?

The case law is limited.  And what case law does exist appears based on (oftentimes erroneously, and sometimes egregiously) case law stemming from Verizon or other ‘conduit’ § 512(a) style cases.

In re Subpoena to Facebook

Under the Statute, and read for its plain wording:

“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.”

§ 512(h)(1).

There is no ambiguity with this wording.  Thus, although Facebook’s offices in Texas are in Austin (Western District) and Dallas (Northern District), in conjunction with the plain wording of § 512(h)(1) I filed the DMCA subpoena request (on behalf of my Client) in Houston (Southern District).

Because the subpoena request included: 1) a proposed subpoena; 2) a statutorily compliant DMCA notice; and 3) an applicable sworn declaration, the clerk correctly issued the DMCA subpoena pursuant to  § 512(h)(4) (“If the notification filed satisfies the provisions of subsection (c)(3)(A), the proposed subpoena is in proper form, and the accompanying declaration is properly executed, the clerk shall expeditiously issue and sign the proposed subpoena and return it to the requester for delivery to the service provider.”).

Unfortunately, despite the simplicity of the subpoena and its request, Facebook objected toward its need to comply therewith.  The objection was based largely on its need to comply with a DMCA subpoena issued from the Southern District, while the closest Facebook office is located in Austin (Western District).  This objection largely relied on precedent from In re Subpoena to University of NC and Well Go USA.[3]

In response to my Motion to Compel production, Facebook said the (proposed) Order to Compel was invalid because: 1) sufficient identification information existed; 2) no jurisdiction (for the SDTX); 3) improper venue; and 4) violation of Rule 45(c)(2)(A).

Regrettably the Court agreed with Facebook, mainly noting there was no ‘nexus’ in the Southern District between the parties (Client – California; Facebook – closest office in Austin), and deemed the issued DMCA subpoena as invalid.  It also stated that any of the reasons suggested by Facebook could reasonably be viewed as sufficient grounds to invalidate the subpoena.

I found this disappointing given the plain reading of the statute provides no reference to venue, jurisdiction, or a mileage limitation.

A proposed proper construction of § 512(h), and reasons why the Court is in clear error will follow shortly.

[1] 351 F.3d 1229, 1233 (D.C.Cir.2003), cert. denied, 543 U.S. 924, 125 S.Ct. 309, 160 L.Ed.2d 222 (2004)
[2] An instructive summary on the evolution of the DMCA Subpoena and ‘conduit’ cases may be found in the “Statutory Background” of Judge Beryl A. Howell’s Memorandum Opinion (Document No. 46) for AF Holdings LLC v. Does 1-1,058, case 1:12-cv-00048-BAH (Dist. Court, Dist. of Columbia, 2012); see also Park, Michelle. "In Re Charter Communications: The Newest Chapter in P2P File Sharing." BUJ Sci. & Tech. L. 11 (2005): 324.