A Federal Pure Bill of Discovery

by Jay Marshall Wolman

I read an interesting case over the weekend.  You may recall the case of Heleen Mees allegedly stalking Citigroup chief economist Willem Buiter.  She was charged with five misdemeanor counts after, it seems, an affair with the married Buiter didn’t pan out.  The charges were dropped as part of a deal.  However, the story doesn’t end there.

It seems that, following the criminal process, Ms. Mees intended to sue Mr. Buiter in the Netherlands for defamation.  She filed an application in Federal court in New York, pursuant to 28 U.S.C. § 1782, which allows a district court, “upon the application of any interested person,” to require a person (assuming personal jurisdiction) to “give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign or international tribunal.” The application was denied, so she appealed to the Second Circuit.

Last week, the Second Circuit issued its decision.  There are two key parts to its holding:

First, an applicant may satisfy the statute’s “for use” requirement even if the discovery she seeks is not necessary for her to succeed in the foreign proceeding. Second, the discovery need not be sought for the purpose of commencing a foreign proceeding in order to be “for use” in that proceeding.

Ms. Mees had not even begun litigation in the Netherlands and it was unclear whether she even needed what she sought to either plead her case or prove it.  Yet, the 2nd Circuit ruled that her application could proceed.  It was remanded to determine whether the discretionary factors under Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 259, 124 S.Ct. 2466, 159 L.Ed.2d 355 (2004) were met.  As set forth in that case, the factors are:

   First, when the person from whom discovery is sought is a participant in the foreign proceeding (as Intel is here), the need for §1782(a) aid generally is not as apparent as it ordinarily is when evidence is sought from a nonparticipant in the matter arising abroad. A foreign tribunal has jurisdiction over those appearing before it, and can itself order them to produce evidence….In contrast, nonparticipants in the foreign proceeding may be outside the foreign tribunal’s jurisdictional reach; hence, their evidence, available in the United States, may be unobtainable absent §1782(a) aid. …

   Second, …a court presented with a §1782(a) request may take into account the nature of the foreign tribunal, the character of the proceedings underway abroad, and the receptivity of the foreign government or the court or agency abroad to U. S. federal-court judicial assistance. …Further, the grounds Intel urged for categorical limitations on §1782(a)’s scope may be relevant in determining whether a discovery order should be granted in a particular case. …Specifically, a district court could consider whether the §1782(a) request conceals an attempt to circumvent foreign proof-gathering restrictions or other policies of a foreign country or the United States…. Also, unduly intrusive or burdensome requests may be rejected or trimmed. …[Internal citations omitted]

This case got me thinking.  Normally, to obtain discovery in a case, one must file a lawsuit against a defendant over whom the court has jurisdiction, engage in a Rule 26(F) conference with them, and then propound discovery.  One of the biggest obstacles is when you don’t know who the defendant is.  Take, for example, your standard bittorrent movie download, violating the studio’s copyright.  Let’s assume that actual infringement has occurred and that the studio has the right to pursue the claim.  All the investigation may turn up is the IP address used to download the movie.

One of the problems raised by the defendants is that an IP address, like a telephone number, only tells you the subscriber, not the infringer.  It is as if you only got the license plate number of the car that hit you, not the driver.  In the MVA context, you can frequently sue the driver under a theory of negligent entrustment or vicarious liability and ultimately learn the identity of the motorist.  Unfortunately, those theories might not be available in the copyright context, notwithstanding arguments to the contrary.  So, what is a content creator to do?  Suing the John Doe account holder might get the case thrown out when trying to obtain early discovery if the complaint does not allege facts to suggest John Doe is the infringer, rather than his roommate.

What is needed, then, is a pure bill of discovery.  Some states, such as Connecticut, permit the taking of discovery before commencing an action in its own state courts.  C.G.S. 52-156a.  Florida, though, appears to permit it more broadly.  However, both of those have limitations where the person with the information is either in a different state or if (in Connecticut’s case) the use is for an action in another court.

The Second Circuit effectively determined that a section 1782(a) application can work as a pure bill of discovery.  The caveat, of course, is that the rights holder must be able to contemplate an action against the infringer outside the United States.  Under the Berne Convention, it would seem generally cognizable, assuming a foreign infringer in a signatory country.  Bittorrent swarms not infrequently include actual foreign infringers and domestic infringers using foreign proxies.  Thus, a cognizable claim to pursue these infringers in a foreign court can be alleged; the scope of the discovery, however, need not be limited to them.  Under the Second Circuit’s ruling, the rights holder could pursue discovery from a domestic ISP to identify the account holder and then directly from the account holder to identify the swarm participant, so as to potentially call the participant as a witness in the foreign proceeding that the rights holder never actually has to file. [Of course, it is a good idea to actually file abroad, especially if there is a concern that the 1782(a) application was not filed in good faith.] And, once an actual domestic infringer is identified, there is nothing to preclude bringing a domestic copyright infringement action against that person.

Now to see if anyone thinks this could work.

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