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1 KEKER & VAN NEST, LLP

RAGESH K. TANGRI - #159477


2 MICHAEL H. PAGE - #154913
MARK A. LEMLEY - #155830
3 MICHAEL S. KWUN - #198945
710 Sansome Street
4 San Francisco, CA 94111-1704
Telephone: (415) 391-5400
5 Facsimile: (415) 397-7188

6 Attorneys for Plaintiff


PACIFIC BELL INTERNET SERVICES
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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SAN FRANCISCO DIVISION
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PACIFIC BELL INTERNET SERVICES, Case No. C 03-3560 SI
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Plaintiff, PBIS’ MOTION FOR SUMMARY
14 JUDGMENT RE CLAIM TWO
v. (DECLARATORY RELIEF UNDER
15 ARTICLE III OF THE UNITED STATES
RECORDING INDUSTRY ASSOCIATION CONSTITUTION)
16 OF AMERICA, INC., MEDIASENTRY, INC.
d/b/a MEDIAFORCE, and IO GROUP, INC., Date: October 31, 2003
17 d/b/a TITAN MEDIA, TITANMEDIA.COM, Time: 9:00 a.m.
TITANMEN.COM, Courtroom: 10, 19th Floor
18 Judge: Hon. Susan Illston
Defendants.
19 Date Comp. Filed: July 30, 2003

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319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 TABLE OF CONTENTS

2 Page

3 I. SUMMARY OF ARGUMENT ...........................................................................................1


4 II. BACKGROUND .................................................................................................................2
5 A. The DMCA’s Subpoena Provision ..........................................................................2
6 B. Defendants’ Actions.................................................................................................4
7 III. ARGUMENT: PBIS Is Entitled to Judgment as a Matter of Law that a
Judicial Subpoena Cannot Be Issued or Enforced Outside a Pending Case or
8 Controversy..........................................................................................................................5
9 A. Courts may act only where there is a pending case or controversy .........................6
10 B. Federal courts may issue subpoenas where there is a pending, live
controversy...............................................................................................................8
11
1. Federal courts may issue subpoenas in aid of a pending federal
12 case, but the DMCA does not require a pending federal case .....................8
13 2. Federal courts may issue subpoenas in aid of a pending
controversy before Congress or an administrative agency, but
14 the DMCA does not require such a pending controversy ............................8
15 3. Courts also have limited authority to issue subpoenas in
connection with pre-filing discovery .........................................................10
16
C. Federal courts may enforce subpoenas duly issued by other
17 governmental bodies ..............................................................................................11
18 D. The DMCA’s subpoena provision violates Article III to the extent that
it purports to authorize federal courts to issue subpoenas absent a
19 pending controversy...............................................................................................12
20 IV. CONCLUSION..................................................................................................................14
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319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 Cases
Anderson v. Liberty Lobby,
2 477 U.S. 242 (1986).................................................................................................................... 5
3 Campbell v. Wood,
18 F.3d 662 (9th Cir. 1994) ........................................................................................................ 6
4 Columbia Insurance Co. v. Seescandy.com,
185 F.R.D. 573 (N.D. Cal. 1999).............................................................................................. 13
5
Ex parte McCardle,
6 74 U.S. 506 (1868)...................................................................................................................... 6
Gardner v. Nike, Inc.,
7 279 F.3d 774 (9th Cir. 2002) ...................................................................................................... 4
8 Gordon v. United States,
117 U.S. Appx. 697 (1864)..................................................................................................... 6, 7
9 Hayburn’s Case,
2 U.S. 408 (1792).................................................................................................................... 6, 7
10
In re Letter of Request from Supreme Court,
11 138 F.R.D. 27 (S.D.N.Y. 1991) ................................................................................................ 11
In re Letters of Request to Examine Witnesses from the Court of Queen's
12 Bench for Manitoba, Canada,
488 F.2d 511 (9th Cir. 1973) .................................................................................................... 11
13
In re Letters Rogatory from the Toyko District, Tokyo,
14 539 F.2d 1216 (9th Cir. 1976) .................................................................................................. 11
In re Verizon Internet Services, Inc.,
15 257 F. Supp. 2d 244 (D.D.C. 2003)...................................................................................... 8, 10
16 Interstate Commerce Comm’n v. Brimson,
154 U.S. 447 (1894)............................................................................................................ 11, 12
17 Kastigar v. United States,
406 U.S. 441 (1972).................................................................................................................. 11
18
Mansfield, C. & L.M. Ry. Co. v. Swan,
19 111 U.S. 379 (1884).................................................................................................................... 6
Marbury v. Madison,
20 5 U.S. 137 (1803)........................................................................................................................ 7
21 McIntyre v. Morgan,
624 F. Supp. 658 (S.D. Ind. 1985).............................................................................................. 9
22 Muskrat v. United States,
219 U.S. 346 (1911).................................................................................................................... 6
23
Osborn v. Bank of United States,
24 22 U.S. 738 (1824)...................................................................................................................... 6
Petition of State of N.C.,
25 68 F.R.D. 410 (S.D.N.Y. 1975) ................................................................................................ 10
26 Rossi v. Motion Picture Ass’n of Am.,
No. 02-00239BMK, 2003 U.S. Dist. LEXIS 1864, at *8-*9
27 (D. Haw. Apr. 29, 2003) ............................................................................................................. 4
Simon v. Eastern Kentucky Welfare Rights Organization,
28 426 U.S. 26 (1976)..................................................................................................................... 9

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319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 State of Ariz. v. State of Cal,
292 U.S. 341 (1934).................................................................................................................. 10
2 Steel Co. v. Citizens for a Better Env’t,
523 U.S. 83 (1998)...................................................................................................................... 7
3
United States Catholic Conf. v. Abortion Rights Mobilization, Inc.,
4 487 U.S. 72 (1988)................................................................................................................ 7, 12
United States v. Ferreira,
5 54 U.S. 40 (1851).................................................................................................................... 6, 7
6 United States v. Larson,
302 F.3d 1016 (9th Cir. 2002) .................................................................................................... 6
7 United States v. Morton Salt Co,
338 U.S. 632 (1950).............................................................................................................. 7, 12
8
United States v. Williams,
9 504 U.S. 36 (1992).............................................................................................................. 11, 12
United States v. Yale Todd (U.S. 1794)
10 inserted by order of the Court at United States v. Ferreira,
54 U.S. 40 (1851)........................................................................................................................ 7
11
WGN Continental Broadcasting Co. v. United Video,
12 693 F.2d 622 (7th Cir. 1982) ...................................................................................................... 3
Williams v. City of Oakland,
13 915 F. Supp. 1074 (N.D. Cal. 1996) ........................................................................................... 5
14 Statutes
17 U.S.C. § 111(a)(3)...................................................................................................................... 3
15
17 U.S.C. § 411............................................................................................................................... 4
16 17 U.S.C. § 512........................................................................................................................... 2, 3
17 17 U.S.C. § 512(a) ...................................................................................................................... 2, 3
17 U.S.C. § 512(b) ...................................................................................................................... 2, 4
18
17 U.S.C. § 512(c) .......................................................................................................................... 2
19 17 U.S.C. § 512(c)(1)(C) ................................................................................................................ 3
20 17 U.S.C. § 512(c)(3)(A)(v) ........................................................................................................... 4
17 U.S.C. § 512(d) .......................................................................................................................... 3
21
17 U.S.C. § 512(h) ................................................................................................................. passim
22 17 U.S.C. § 512(h)(2)(C) ................................................................................................................ 4
23 17 U.S.C. § 512(h)(4) ..................................................................................................................... 3
17 U.S.C. § 512(m) ......................................................................................................................... 2
24
17 U.S.C. §§ 1201-1205 ................................................................................................................. 2
25 2 U.S.C. § 318 et seq....................................................................................................................... 9
26 2 U.S.C. § 381................................................................................................................................. 9
2 U.S.C. § 382................................................................................................................................. 9
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2 U.S.C. § 386(c) ............................................................................................................................ 9
28 2 U.S.C. § 388................................................................................................................................. 9

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319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 28 U.S.C. § 1782(a) ...................................................................................................................... 10
35 U.S.C. § 24................................................................................................................................. 9
2
45 U.S.C. § 157............................................................................................................................... 9
3 7 U.S.C. § 2354(a) .......................................................................................................................... 9
4 Fed. R. Civ. P. 27.................................................................................................................... 10, 11
Fed. R. Civ. P. 27(a)(1)................................................................................................................. 10
5
Fed. R. Civ. P. 27(a)(2)................................................................................................................. 10
6 Fed. R. Civ. P. 56(c) ....................................................................................................................... 5
7 Other Authorities
Music Industry Files First Wave of Lawsuits Against Swappers,
8 USAToday.com, Sep. 9, 2003 .................................................................................................... 7
9 RIAA Nearing 1,000 Subpoenas Against File-Sharing Suspects,
SiliconValley.com, July 18, 2003............................................................................................... 7
10 S. Rep. No. 105-190 (1998) ............................................................................................................ 2
11 Testimony of Cary Sherman, President, RIAA, before the Senate
Commerce Committee, Sept. 19, 2003 ..................................................................................... 13
12 Constitutional Provisions
13 U.S. Const., art. III, § 2................................................................................................................... 6

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319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 NOTICE OF MOTION AND MOTION

2 TO ALL PARTIES AND THEIR COUNSEL OF RECORD:

3 NOTICE IS HEREBY GIVEN that on October 31, 2003 at 9:00 a.m., or as soon

4 thereafter as the matter may be heard, in the courtroom of the Honorable Susan Illston,

5 Courtroom 10, 19th Floor, located at 450 Golden Gate Avenue, San Francisco, California,

6 Plaintiff Pacific Bell Internet Services (“PBIS”) will and hereby does move for summary

7 judgment as to claim two of its complaint in this action, which seeks a declaratory judgment that

8 the subpoena power contained in 17 U.S.C. § 512(h) is limited to judicial process issued and

9 enforced in aid of a pending lawsuit under the Copyright Act. The motion is based on this

10 Notice of Motion and Motion, the following Memorandum of Points and Authorities, the

11 Declaration of Rhonda K. Compton filed herewith, and the papers, records, and pleadings on file

12 in this case. This motion is made on the ground that PBIS is entitled to judgment as a matter of

13 law on claim two of its complaint.

14 MEMORANDUM OF POINTS AND AUTHORITIES

15 I. SUMMARY OF ARGUMENT

16 Claim two of PBIS’ complaint addresses the constitutionality of 17 U.S.C. § 512(h), the

17 subpoena provision of the DMCA.1 Defendants the Recording Industry Association of America

18 (“RIAA”) and Io Group, Inc., doing business as Titan Media, TitanMedia.com and

19 TitanMen.com (“Titan”), have both sent PBIS subpoenas issued under the purported authority of

20 section 512(h), notwithstanding the lack of any pending federal court action to which the

21 information sought relates, and PBIS has a reasonable apprehension (based on the sending of

22 thousands of purported DMCA notices to PBIS by Defendant MediaSentry, doing business as

23 MediaForce (“MediaForce”)) that MediaForce, too, will send PBIS such subpoenas. The RIAA

24 and Titan have each requested and been granted subpoenas without having made any showing of

25 a live case or controversy within the meaning of Article III of the United States Constitution. If

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PBIS has limited the present motion to claim two of its complaint, because that is the claim that
27 most clearly presents an issue of pure law, and which is thus most plainly susceptible to
summary judgment at an early stage.
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319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 the DMCA authorizes such subpoenas, it unconstitutionally purports to expand the federal

2 judicial power beyond the scope authorized by Article III.

3 II. BACKGROUND

4 A. The DMCA’s Subpoena Provision

5 The Digital Millennium Copyright Act of 1998 (“DMCA”) amended the Copyright Act;

6 it sought to balance copyright owners’ interests in protecting their rights with the need to protect

7 and foster the Internet as an important medium of free expression. Title I of the DMCA provided

8 new rights to copyright holders, barring the circumvention of technological “self-help” measures

9 used to protect their copyrights. See 17 U.S.C. §§ 1201-1205. Self help was to be copyright

10 owners’ principal new remedy. Title II of the DMCA codified immunities for Internet Service

11 Providers (“ISPs”), which turn upon the particular role they play in the handling, storage, and

12 dissemination of Internet content. 17 U.S.C. § 512.2 In both titles, Congress recognized the

13 substantial interest in protecting the privacy and freedom of expression of the over 100 million

14 Internet users in this country. See, e.g., id. §§ 512(m), 1205; see also S. Rep. No. 105-190, at 18

15 (1998) (“[T]he committee concluded that it was prudent to rule out any scenario in which section

16 1201 might be relied upon to make it harder, rather than easier, to protect personal privacy on the

17 Internet.”).

18 Title II of the DMCA codified a crucial distinction between different functions in which

19 an ISP might be engaged. At one end of the spectrum, an ISP may be “hosting” information on

20 its own network or systems. See 17 U.S.C. § 512(c). At the other end of the spectrum, an ISP

21 may merely act as a passive conduit for communications created, controlled, and stored by

22 others, storing the information only as long as necessary to transmit it. Id. § 512(a). Falling

23 somewhere in between these two extremes are “caching” functions, in which an ISP stores

24 intermediate or temporary copies of information hosted elsewhere on the Internet, in order to

25 increase speed and ease of access to that information, id. § 512(b); and search services, which

26 may provide hyperlinks to information stored permanently (or at least semi-permanently)

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A copy of 17 U.S.C. § 512 is attached as an addendum to this Motion for the convenience of
28 the Court.

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319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 elsewhere on the Internet, id. § 512(d).

2 The DMCA makes clear that ISPs enjoy the same immunities that have traditionally

3 applied to entities that provide a pure “transmission” or “conduit” function. 17 U.S.C.

4 § 111(a)(3) (pre-DMCA statutory limitation on liability for passive carriers); see also, e.g., WGN

5 Continental Broadcasting Co. v. United Video, 693 F.2d 622, 624-25 (7th Cir. 1982) (discussing

6 section 111(a)(3)). Consistent with this recognition, section 512(a) does not impose any specific

7 duties on ISPs serving as a conduit for transmission of the content of others. By contrast,

8 subsections (b), (c), and (d) of section 512 impose limited duties to assist copyright owners in

9 protecting their property interests where the ISP has some access to, or control over, the

10 particular material claimed to be infringing. These duties are carefully calibrated depending

11 upon the ISP’s involvement with, and control over, the material at issue. Thus, in stark contrast

12 to subsection (a), subsection (c) (which relates to “hosting” functions) provides that where a user

13 stores content on the service provider’s systems or network (e.g., the provider “hosts” a website)

14 it must respond to a specifically defined DMCA notice that the material is infringing. Id.

15 § 512(c)(1)(C).

16 Title II of the DMCA also contains a unique subpoena provision, section 512(h), which is

17 at issue here. This provision was designed to require an ISP to identify the owner of particular

18 content stored on the provider’s network that is claimed to be infringing in a valid DMCA notice

19 as provided in subsection (c). See id. § 512(h)(4) (notice must “satisf[y] the provisions of

20 subsection (c)(3)(A)” for any subpoena to issue). The limitation of this unique subpoena power

21 to the subsection (c) context makes perfect sense in light of the service provider’s ability to

22 examine and control the content stored on its own systems. It also reflects the difference

23 between burdening ISPs with the role of “copyright policeman,” requiring them to invade the

24 privacy of their subscribers, and requiring ISPs to exercise narrowly targeted, content-specific

25 functions for material resident on their own facilities.

26 On its face, section 512(h) imposes no requirement that there be a pending court case

27 prior to issuance of a subpoena. Indeed, the requesting party need not even allege the elements

28 of any civil action within the jurisdiction of the federal courts. Although the requestor must

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319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 recite that the subpoena’s “purpose” is to identify an alleged infringer and that information

2 obtained will be used for “protecting rights” under the copyright laws, no suit need ever be

3 brought, or even contemplated, for a subpoena to issue. 17 U.S.C. § 512(h)(2)(C).

4 Indeed, the notice that accompanies the subpoena requires only the assertion of “a good

5 faith belief” – but not even necessarily a reasonable one or one resulting from a reasonable

6 investigation – that infringement has occurred.3 That is, the showing necessary to obtain a

7 Section 512(h) subpoena need not even pass the Rule 11 sanctions test for filing a lawsuit.4

8 Finally, nothing in section 512(h) requires notice to the real party in interest (the

9 purported infringer), and thus nothing requires that any attempt be made to bring the potential

10 adverse party before the court.

11 B. Defendants’ Actions

12 The RIAA has obtained issuance of hundreds of DMCA subpoenas that purport to require

13 that PBIS identify subscribers at unique listed Internet Protocol (“IP”) addresses at particular

14 dates and times5 that were allegedly involved in using copyrighted materials without

15 authorization. Declaration of Rhonda K. Compton (“Compton Decl.”) ¶ 2 & Exhs. A-D.

16 According to the RIAA, these PBIS subscribers were using “peer-to-peer” applications (such as

17 KaZaA, Gnutella, and eDonkey) – i.e., software that allows multiple users to exchange files

18 residing on their personal computers directly with those on the personal computers of others – to

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20 See id. § 512(c)(3)(A)(v); Rossi v. Motion Picture Ass’n of Am., No. 02-00239BMK, 2003 U.S.
Dist. LEXIS 1864, at *8-*9 (D. Haw. Apr. 29, 2003) (stating that “good faith” provision in
21 subsection (c) does not even “require[] a copyright holder to conduct an investigation to establish
actual infringement prior to sending a notice to an ISP”).
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22 Section 512(h) does not require the pleading of the elements of an infringement cause of action.
While an action for copyright infringement can be brought only by the owner of the exclusive
23 rights, 17 U.S.C. § 501(b); Gardner v. Nike, Inc., 279 F.3d 774, 781 (9th Cir. 2002),
section 512(h) allows agents of copyright owners to obtain subpoenas. And while registration of
24 the copyright with the U.S. Copyright Office is a jurisdictional prerequisite to an infringement
lawsuit, 17 U.S.C. § 411, section 512(h) requires no such proof of registration.
25 5
Whenever a user is connected to the Internet, the ISP assigns the user a numerical “address.”
26 This IP address cannot be associated with the user’s name and real address, allowing users to
browse web sites, read email, and post speech to chat rooms anonymously. Many copyright
27 owners now use electronic robots or “bots” to search the Internet for words or other snippets
suggesting the presence of copyrighted material. When they identify such material, they use
28 software to associate the material with an IP address, which they can then use to identify the ISP.

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319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 infringe copyrights owned by RIAA member companies. See id., Exhs. A-D.

2 Similarly, Titan has previously served a subpoena on PBIS purporting to order it to

3 identify subscribers at 59 unique listed IP addresses at particular dates and times that were,

4 according to Titan, allegedly involved in using copyrighted materials without authorization. Id.

5 ¶ 3 & Exhs. E-F. As with the RIAA subpoenas, the subscribers whose identities Titan sought

6 were purportedly using peer-to-peer applications. See id., Exh. F. Although Titan subsequently

7 withdrew this subpoena, it has continued to send PBIS notices under the purported authority of

8 the DMCA. Id. ¶¶ 4-5 & Exhs. G-H. A notice received on September 23, 2003 states that PBIS

9 “may receive a subpoena requiring you to provide the name and other identifying information for

10 this subscriber,” requests that PBIS send a copy of the notice to the subscriber, and refers the

11 subscriber to the web site address www.TitanLegal.com. Id., Exh. H. The web page at

12 www.TitanLegal.com states, “If you do not accept this offer to settle we will subpoena . . . your

13 service provider for your name and address and WE WILL PURSUE ADDITIONAL ACTION

14 INCLUDING FILING A FEDERAL LAWSUIT AGAINST YOU seeking maximum damages,

15 attorney’s fees and costs.” Id., Exh. I.

16 MediaForce has not yet served PBIS with any DMCA subpoenas, but it has sent PBIS

17 thousands of purported DMCA notices based on PBIS’ provision of conduit functions to

18 subscribers using peer-to-peer applications. Compton Decl. ¶ 7 & Exh. J. As explained above,

19 sending valid DMCA notices to a service provider is a necessary precondition to obtaining

20 DMCA subpoenas.

21 III. ARGUMENT:
PBIS Is Entitled to Judgment as a Matter of Law that
22 a Judicial Subpoena Cannot Be Issued or Enforced
Outside a Pending Case or Controversy
23
Summary judgment is appropriate where there is no genuine issue as to any material fact
24
and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); Anderson
25
v. Liberty Lobby, 477 U.S. 242, 248-49 (1986). Claim two of PBIS’ complaint presents a pure
26
issue of law, and thus is amenable to resolution on a motion for summary judgment. Williams v.
27
City of Oakland, 915 F. Supp. 1074, 1075 (N.D. Cal. 1996).
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319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 In disregard of Article III, 17 U.S.C. § 512(h) purports to authorize the issuance of

2 judicial process absent a pending case, without any requirement that the elements of a legal cause

3 of action be alleged, and without the presence of the potentially adverse party (the person whose

4 identifying information is sought). In so doing, the statute attempts to impose upon the judiciary

5 the non-judicial function of supervising investigation by a private non-litigant on an ex parte

6 basis. This the Constitution does not permit. Article III does not authorize the use of federal

7 judicial power to investigate possible civil wrongdoing or to identify possible defendants outside

8 the context of an actual “case” or “controversy.”

9 A. Courts may act only where there is a pending case or controversy


10 Article III of the Constitution limits the exercise of federal judicial power to specifically

11 enumerated “cases” and “controversies.” U.S. Const., art. III, § 2. A “case” in the constitutional

12 sense has consistently been defined as “a suit instituted according to the regular course of

13 judicial procedure.” Muskrat v. United States, 219 U.S. 346, 356 (1911) (citation omitted). “The

14 requirement that a case or controversy anchor [a federal court’s] jurisdiction as a threshold

15 matter spring[s] from the nature and limits of the judicial power of the United States and is

16 inflexible and without exception.” United States v. Larson, 302 F.3d 1016, 1019 (9th Cir. 2002)

17 (internal quotations omitted).

18 Article III’s case or controversy clause requires, at a minimum, an adversarial proceeding

19 that involves at least two parties, a cause of action within the jurisdiction of the federal courts,

20 and a prayer for judicial relief that is determinative of some set of rights or obligations as

21 between those parties. Hayburn’s Case, 2 U.S. 408 (1792); Osborn v. Bank of United States, 22

22 U.S. 738, 819 (1824); United States v. Ferreira, 54 U.S. 40 (1851); Gordon v. United States, 117

23 U.S. Appx. 697, 699-706 (1864); Muskrat, 219 U.S. at 353-63. “A justiciable controversy is

24 definite, concrete, real, and substantial; it is subject to specific relief. A controversy is not

25 justiciable if it is hypothetical, abstract, academic, or moot.” Campbell v. Wood, 18 F.3d 662,

26 680 (9th Cir. 1994). In the absence of such a case or controversy, a federal court is without

27 authority to take any judicial action except dismissal of the proceeding. Ex parte McCardle, 74

28 U.S. 506, 514 (1868); Mansfield, C. & L.M. Ry. Co. v. Swan, 111 U.S. 379, 382 (1884); Steel Co.

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319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 v. Citizens for a Better Env’t, 523 U.S. 83, 94 (1998).

2 Congress cannot expand the federal courts’ case or controversy jurisdiction by legislation

3 that would convert them into free-floating investigative bodies to discover facts unconnected to

4 the adjudication of actual disputes. See Hayburn’s Case, 2 U.S. at 410 (concluding that a law

5 assigning judges the task of taking pension applications and making recommendations to the

6 Secretary of War unconstitutionally imposed duties “not of a judicial nature”); United States v.

7 Ferreira, 54 U.S. 40, 46-47 (1851) (striking down a law assigning Florida judges the task of

8 adjusting claims by Spanish inhabitants under the Treaty of 1819 in ex parte proceedings based

9 “upon such evidence as he may have before him, or be able himself to obtain”).

10 As the Supreme Court explained in United States v. Morton Salt Co., 338 U.S. 632

11 (1950), “[f]ederal judicial power itself extends only to adjudication of cases and controversies

12 and it is natural that its investigative powers should be jealously confined to these ends.” Id. at

13 641-42. In upholding the ability of a federal agency to monitor compliance with a previously

14 entered judicial decree, the Court drew a sharp distinction between these “investigative and

15 accusatory duties,” properly lodged in an executive agency, and the more limited role of the

16 Article III courts. Id. at 643. While the agency could engage in a “fishing expedition” for

17 evidence of civil or criminal wrongs, “[c]ourts have often disapproved the employment of the

18 judicial process in such an enterprise.” Id. at 641-42; see also Marbury v. Madison, 5 U.S. 137,

19 171-72 (1803); United States v. Yale Todd (U.S. 1794), inserted by order of the Court at United

20 States v. Ferreira, 54 U.S. 40, 52-53 (1851); Gordon, 117 U.S. Appx. at 699-706; United States

21 Catholic Conf. v. Abortion Rights Mobilization, Inc., 487 U.S. 72, 76 (1988).6

22
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23 Assigning the clerk of the court the non-judicial role of issuing subpoenas for private parties
outside of any pending case will also interfere with operations of the Judicial Branch itself by
24 diverting resources from their proper adjudicative role. Indeed, the clerk’s office of the district
court in Washington, D.C. has already been flooded with subpoena requests and has been forced
25 to reassign personnel from other tasks. See RIAA Nearing 1,000 Subpoenas Against File-
Sharing Suspects, SiliconValley.com, July 18, 2003, at <http://www.siliconvalley.com/mld/
26 siliconvalley/6335275.htm>; see also Music Industry Files First Wave of Lawsuits Against
Swappers, USAToday.com, Sep. 9, 2003, at <http://www.usatoday.com/life/2003-09-08-
27 riaa_x.htm> (“The RIAA this summer filed more than 1,600 subpoenas requiring Internet service
providers to turn over personal data about subscribers.”). In other litigation addressing the
28 DMCA’s subpoena provision, Judge Bates of the District Court for the District of Columbia
alluded to this possibility as a substantial separation of powers concern, but held that the concern
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319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 B. Federal courts may issue subpoenas where there is a pending, live controversy

2 1. Federal courts may issue subpoenas in aid of a pending federal case, but the
DMCA does not require a pending federal case
3
Subpoenas issued by federal courts are also subject to Article III’s case or controversy
4
limitation. Issuance and enforcement of a subpoena by a federal court in the context of a case
5
pending before a federal court plainly will not run afoul of Article III, because the existing case
6
must itself satisfy Article III. Because the DMCA’s subpoena provision does not require a
7
pending federal court case, however, that authority is not enough to support 17 U.S.C. § 512(h).
8
Moreover, while federal courts have limited authority to issue or enforce subpoenas in
9
other contexts, that limited authority is insufficient to provide constitutional cover for
10
section 512(h). In In re Verizon Internet Services, Inc., 257 F. Supp. 2d 244, 256 (D.D.C. 2003),
11
an action to which PBIS was not a party, Judge Bates of the District Court for the District of
12
Columbia held that the DMCA’s subpoena provision does not violate Article III. In so holding,
13
Judge Bates relied on several scenarios in which federal courts issue or enforce subpoenas,
14
notwithstanding the lack of any pending federal case. As explained below, the scenarios
15
considered by Judge Bates do not support the conclusion that the DMCA’s subpoena provision is
16
constitutional.
17
2. Federal courts may issue subpoenas in aid of a pending controversy before
18 Congress or an administrative agency, but the DMCA does not require such
a pending controversy
19
Judge Bates relied on the existence of several statutes that authorize courts to issue
20
subpoenas in connection with pending legislative or administrative controversies,
21
notwithstanding the lack of a pending federal court action. The mere existence of these
22
provisions does not support finding the DMCA’s subpoena provision constitutional; PBIS is
23
unaware of any court opinion addressing the constitutionality of these other subpoena provisions.
24
However, this Court need not grapple with the question whether these other provisions, not
25
presently before the Court, are constitutional, because each of those provisions, unlike the
26

27 was “speculative” because “no barrage of requests has occurred.” In re Verizon Internet
Services, Inc., 257 F. Supp. 2d 244, 256 (D.D.C. 2003). What the district court deemed to be
28 speculation at the time Verizon was decided has now clearly come to pass.

8
319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 DMCA, requires that there be a pending controversy somewhere.

2 Where there is a pending controversy before Congress or an administrative agency,

3 Congress may authorize the judicial branch to issue and enforce subpoenas in aid of resolution of

4 that dispute. Thus, for example, the Federal Contested Elections Act (“FCEA”), 2 U.S.C. § 318

5 et seq., authorizes a judge or clerk of a district court to issue subpoenas for depositions in

6 connection with contested House elections. See 2 U.S.C. § 388. In McIntyre v. Morgan, 624 F.

7 Supp. 658 (S.D. Ind. 1985), the court held that this provision is limited to situations in which the

8 subpoenas are issued in connection with a pending FCEA action.7 See id. at 663; see also 2

9 U.S.C. § 386(c) (prescribing time of taking of depositions in an FCEA action). In so holding, the

10 court recognized that “in order for there to be a ‘case’ or ‘controversy’ there must be a genuine

11 dispute between the parties, not between one party and someone not before the Court.” Id. at

12 661; see also id. at 661-62 (Article III requires an alleged injury “that fairly can be traced to the

13 challenged actions of the defendant, and not injury that results from the independent action of

14 some third party not before the court” (quoting Simon v. Eastern Kentucky Welfare Rights

15 Organization, 426 U.S. 26, 41-42 (1976)). In sum, in order for a valid FCEA subpoena to issue,

16 there must be a live case or controversy between an elected Representative and a party contesting

17 that election.

18 Similarly, 35 U.S.C. § 24 allows courts to issue deposition subpoenas only where there is

19 a pending “contested case in the Patent and Trademark Office.” 35 U.S.C. § 24 (emphasis

20 added). Court-issued subpoenas in connection with proceedings under the Railway Labor Act

21 can only issue where there is a pending arbitration between a carrier and its employees. See 45

22 U.S.C. § 157. Subpoenas under the Plant Variety Protection Act must be issued in connection

23 with a “contested case in the Plant Variety Protection Office.” 7 U.S.C. § 2354(a) (emphasis

24 added).

25 In contrast, the DMCA’s subpoena provision does not require that there be any pending

26
7
In order to contest an election under the FCEA, the party contesting the election (the
27 “contestant”) file a notice of contest with the Clerk of the House of Representatives, and must
serve the notice on the person declared the winner in the contested election (the “contestee”).
28 See 2 U.S.C. §§ 381, 382.

9
319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 case or controversy, whether in federal court or elsewhere – indeed, because the person whose

2 identity is being sought need not be given any notice of the subpoena, one of the parties to the

3 possible controversy generally will not even know that there is a possible controversy.

4 3. Courts also have limited authority to issue subpoenas in connection with pre-
filing discovery
5
In Verizon, Judge Bates also analogized the DMCA’s subpoena provision to Rule 27 of
6
the Federal Rules of Civil Procedure, which allows a party to petition for an order allowing
7
discovery to be taken prior to the filing of an action in federal court. See 257 F. Supp. 2d at 252-
8
54. Unlike the DMCA’s subpoena provision, however, Rule 27 includes key procedural
9
safeguards to ensure that ordering the discovery sought is consistent with Article III.
10
A petition pursuant to Rule 27 must be founded on an actual case or controversy between
11
adverse parties that are before the Court. The verified petition must aver that the petitioner
12
expects to file an action cognizable in federal court, though he or she is presently unable to do so,
13
and must also identify the persons the petitioner expects will be adverse parties in that action.
14
Fed. R. Civ. P. 27(a)(1). In contrast, a person seeking a subpoena under § 512(h) need not
15
indicate that he or she expects to file suit against the purported infringer. See 17 U.S.C.
16
§ 512(h).
17
Moreover, a Rule 27 petitioner must serve the petition “in the manner provided in Rule
18
4(d) for service of summons” on the expected adverse parties. Fed. R. Civ. P. 27(a)(2). A Rule
19
27 petition thus bears all the hallmarks of an Article III case or controversy. Indeed, the
20
Supreme Court had described a petition to perpetuate testimony as a “suit.” State of Ariz. v. State
21
of Cal., 292 U.S. 341, 347 (1934). Further, a court must affirmatively determine that the
22
petitioner has made a proper showing under Rule 27 prior to issuance of an order allowing
23
discovery. See, e.g., Petition of State of N.C., 68 F.R.D. 410, 412 (S.D.N.Y. 1975) (denying
24
Rule 27 petition where the petitioner failed to establish that the anticipated action would be
25
within federal jurisdiction).8 The DMCA’s subpoena provision does not require any notice to the
26

27 8
Courts may also order pre-suit discovery in connection with foreign disputes. 28 U.S.C. §
28 1782(a). Section 1782(a) was amended in 1964 to allow subpoenas to issue notwithstanding the
lack of a pending court action, but still applies only where there are “judicial or quasi-judicial
10
319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 person whose identifying information is sought, and requires issuance of a subpoena upon a mere

2 averment that the requesting party has a “good faith belief” that the target of the subpoena has

3 engaged in infringing activity. No showing of a factual basis in support of this “belief” is

4 required. Judge Bates’ attempt to analogize section 512(h) to Rule 27 was inapt.

5 C. Federal courts may enforce subpoenas duly issued by other governmental bodies

6 Finally, federal courts may enforce subpoenas issued by other governmental bodies – but

7 the subpoenas must themselves be valid (i.e. issued pursuant to some duly authorized grant of

8 power). For example, a grand jury’s authority itself to issue subpoenas was already well-

9 established at the time the United States were formed. See Kastigar v. United States, 406 U.S.

10 441, 443-44 (1972) (grand jury’s subpoena power dates back at least to 1612).

11 The grand jury is a “constitutional fixture in its own right,” that belongs to none of the

12 three branches of the government. United States v. Williams, 504 U.S. 36, 47 (1992) (quotation

13 marks and citations omitted). Although the grand jury functions “under judicial auspices,” the

14 judicial branch’s “direct involvement in the functioning of the grand jury has generally been

15 confined to the constitutive one of calling the grand jurors together and administering their oaths

16 of office.” Id. Because the grand jury is not subject to Article III’s limitations, it may engage in

17 investigations regardless of whether there is a pending case or controversy. Id. at 48. However,

18 the grand jury has no power to compel compliance with its subpoenas. Id. That function is left

19 to the judiciary. Id. Article III is fully honored in this process because once enforcement

20 proceedings are initiated, there is a live controversy pending before the federal court – between

21 the grand jury and the reluctant witness.

22 Similarly, when Congress (or an agency acting pursuant to a lawful delegation of powers

23 from Congress) issues subpoenas, Article III is not offended if federal courts are asked to enforce

24 them. In Interstate Commerce Comm’n v. Brimson, 154 U.S. 447 (1894), the Supreme Court

25
controversies.” In re Letters of Request to Examine Witnesses from the Court of Queen's Bench
26 for Manitoba, Canada, 488 F.2d 511, 512 (9th Cir. 1973) (quoting and agreeing with district
court); see also In re Letters Rogatory from the Toyko District, Tokyo, 539 F.2d 1216, 1218-19
27 (9th Cir. 1976). Moreover, where there is no pending foreign action, section 1782(a) has been
construed to incorporate the safeguards prescribed by Rule 27 of the Federal Rules of Civil
28 Procedure. In re Letter of Request from Supreme Court, 138 F.R.D. 27, 30-31 (S.D.N.Y. 1991).

11
319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 held that enforcement of duly-issued ICC subpoenas was judicial in nature, and thus consistent

2 with Article III. The Court reaffirmed the principle that Congress “may not impose upon the

3 courts of the United States any duties not strictly judicial.” Id. at 485. Duties related to the

4 enforcement of ICC subpoenas, however, “are judicial in their nature.” Id. Enforcement of a

5 duly issued ICC subpoena requires a “determination of the issues between [the ICC] and a

6 witness,” id. at 486, and thus requires adjudication of a live controversy.

7 This judicial power – to enforce duly issued subpoenas – is not enough to support the

8 DMCA’s subpoena provision, because under the DMCA, a subpoena is not issued by an agency,

9 but rather by the court, without any requirement of a live case or controversy. 17 U.S.C.

10 § 512(h)(4). “[T]he subpoena power of a court cannot be more extensive than its jurisdiction.”

11 United States Catholic Conference v. Abortion Rights Mobilization, Inc., 487 U.S. 72, 76 (1988).

12 Unlike non-judicial bodies such as grand juries, federal courts lack any authority to engage in

13 investigations absent a live case or controversy. Williams, 504 U.S. at 48. Thus, “if a district

14 court does not have subject-matter jurisdiction over the underlying action, and the process was

15 not issued in aid of determining that jurisdiction, then the process is void and an order of civil

16 contempt based on refusal to honor it must be reversed.” United States Catholic Conf., 487 U.S.

17 at 76; see also Morton Salt, 338 U.S. at 642 (“The judicial subpoena power . . . is subject to

18 those limitations inherent in the body that issues them because of the provisions of the Judiciary

19 Article of the Constitution.” (emphases added)).

20 When a DMCA supboena issues in the absence of a pending federal case, there is no

21 underlying action, and thus a federal court is wholly without authority to issue a subpoena.

22 Under United States Catholic Conference, a subpoena issued without authority is void; there is

23 nothing to enforce, and thus there cannot be a live controversy over its enforcement.

24 D. The DMCA’s subpoena provision violates Article III to the extent that it purports to
authorize federal courts to issue subpoenas absent a pending controversy
25
The DMCA unconstitutionally attempts to expand federal courts’ subpoena power.
26
Section 512(h) does not limit federal courts’ involvement to the mere enforcement of subpoenas
27
issued by an administrative agency, but directly involves them in the actual issuance of the
28

12
319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 subpoenas without a pending or impending case. As explained above, this is beyond a federal

2 court’s authority.

3 To the extent that Defendants believe that they have evidence sufficient to establish that

4 some person whose identity they do not know is infringing their copyrights, the proper recourse

5 is to sue that person as a Doe defendant, and to seek leave to take discovery to identify the

6 defendant under well-established procedures that are consistent with Article III.9 Judge Jensen

7 addressed the issue of when discovery will be allowed prior to service of process on the

8 defendant in Columbia Insurance Co. v. Seescandy.com, 185 F.R.D. 573 (N.D. Cal. 1999).

9 Judge Jensen began by observing that “[a]s a general rule, discovery proceedings take place only

10 after the defendant has been served” but that “in rare cases, courts have made exceptions.” Id. at

11 577. Judge Jensen ultimately allowed the plaintiff to seek the identity of the defendant from

12 third parties, but only after establishing several prerequisites for seeking that discovery,

13 including that the plaintiff “establish to the Court’s satisfaction that plaintiff’s suit against

14 defendant could withstand a motion to dismiss.” Id. at 579. These requirements were designed,

15 inter alia, to “ensure that federal requirements of jurisdiction and justiciability can be satisfied,”

16 “to prevent abuse of this extraordinary application of the discovery process and to ensure that

17 plaintiff has standing to pursue an action against defendant.” Id. at 578-79. Significantly, Judge

18 Jensen held that the “plaintiff must make some showing that an act giving rise to civil liability

19 actually occurred” before forcing disclosure of the defendant’s identity and that “[a] conclusory

20 pleading will never be sufficient to satisfy this element.” Id. at 579-80.

21 In issuing a subpoena pursuant to the DMCA, a federal court acts with but one party

22 before it, no pending controversy (whether in federal court or elsewhere), no idea whether the

23
9
The RIAA contends that the process of discovering the elements of a claim is as simple as two
24 steps – logging on and searching files: “By logging onto these open networks and searching for
files like any other user, the RIAA is able to identify the Internet Protocol addresses (‘IP
25 addresses’) of individuals who are illegally uploading or downloading our works.” Testimony of
Cary Sherman, President, RIAA, before the Senate Commerce Committee, Sept. 19, 2003, at
26 <http://commerce.senate.gov/hearings/testimony.cfm?id=919&wit_id=2584>. What the RIAA
seeks, however, is the subpoena power without ever filing a claim or putting a case before a
27 court. The evidence of this is already clear. The RIAA has reportedly obtained in excess of
1600 subpoenas, yet it has reportedly filed no more than 261 lawsuits. See supra, note 6 and
28 articles cited therein.

13
319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
CASE NO. C 03-3560 SI
1 person the requesting party seeks to unmask is even within the personal jurisdiction of any

2 federal court, and without any assurance that any federal case can or will ever be brought. To the

3 extent that the DMCA’s subpoena provision is invoked outside the context of a federal case, it is

4 unconstitutional.

5 IV. CONCLUSION

6 For the foregoing reasons, PBIS respectfully requests that the Court grant its motion for

7 summary judgment as to claim two of its complaint, and that the Court declare that the subpoena

8 power contained in 17 U.S.C. § 512(h) is limited to judicial process issued and enforced in aid of

9 a pending lawsuit under the Copyright Act.

10 Dated: September 26, 2003 KEKER & VAN NEST, LLP

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By: /s/ Ragesh K. Tangri_________________
13 RAGESH K. TANGRI
Attorneys for Plaintiff
14 PACIFIC BELL INTERNET SERVICES
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319181.01 PBIS’ MOTION FOR SUMM. J. RE CLAIM TWO (DECL. J. RE ARTICLE III)
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