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UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF TEXAS Ft. Worth Division ERGUN CANER, Plaintiff, v. JONATHAN AUTRY, et al., Defendants. * * * * * * * * * * * * * * * * *

Civil Action No. 4:13-cv-00494 (Y)

DEFENDANTS MOTION TO SEVER FOR IMPROPER JOINDER Pursuant to Federal Rules of Civil Procedure 20(a) and 21, Defendants Jonathan Autry (Autry) and Jason Smathers (Smathers) respectfully move to sever the case into two separate casesone for each Defendantbecause the joinder of the two Defendants in the same action was improper. In support of this motion, the Court is respectfully referred to Defendants Memorandum in Support of Their Motion to Sever for Improper Joinder. Plaintiff opposes this Motion. A proposed Order consistent with the relief sought also accompanies this Motion.

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Date: November 25, 2013 Respectfully submitted, /s/ Kelly B. McClanahan Kelly B. McClanahan, Esq. N.D. Tex. Bar #984704DC National Security Counselors 1200 South Courthouse Road Suite 124 Arlington, VA 22204 301-728-5908 240-681-2189 fax Kel@NationalSecurityLaw.org Counsel for Defendant Jason Smathers /s/ Joshua M. Autry Joshua M. Autry, Esq. Admitted Pro Hac Vice Clymer, Musser & Conrad, P.C. 408 W. Chestnut Street Lancaster, PA 17603 717-299-7101 717-299-5115 fax Josh.Autry@clymerlaw.com Counsel for Defendant Jonathan Autry

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UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF TEXAS Ft. Worth Division ERGUN CANER, Plaintiff, v. JONATHAN AUTRY, et al., Defendants. * * * * * * * * * * * * * * * * *

Civil Action No. 4:13-cv-00494 (Y)

DEFENDANTS MEMORANDUM IN SUPPORT OF THEIR MOTION TO SEVER FOR IMPROPER JOINDER As filed, this lawsuit involves four counts against two DefendantsJonathan Autry (Autry) and Jason Smathers (Smathers)and does not involve any counts to which both Defendants are parties; each count only addresses alleged conduct by a single Defendant. While a plaintiff may join multiple claims against a single party without limitation, see Fed. R. Civ. P. 18(a), the rules are more stringent as to when a plaintiff can join multiple parties in a single lawsuit. As discussed more fully below, a plaintiff cannot join defendants who simply allegedly engaged in similar types of behavior, but who are otherwise unrelated. Joinder is therefore inappropriate here, where Plaintiff has not alleged that Defendants conspired or otherwise acted in concert in their alleged acts of copyright infringement, but simply seeks to combine what are properly two distinct lawsuits into a single action. That Plaintiffs claims all arise under the Copyright Act, or even that one video is at issue in one count against each Defendant, is by itself not sufficient to support joinder under Federal Rule of Civil Procedure (Rule) 20. Accordingly, the Amended Complaint should be severed into two separate lawsuits and Plaintiff

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ordered to file amended complaints in each severed action, setting forth his claims against the appropriate Defendant in each action. Defendant Smathers also requests that any further response to the Amended Complaint be deferred pending resolution of this motion, and will be filing a Motion to that effect contemporaneously with this Motion. BACKGROUND This suit has been brought by Plaintiff Dr. Ergun M. Caner (Caner) against Defendants. Each of the four counts charged in the complaint is a copyright infringement claim brought under 17 U.S.C. 106 and 506, and each count alleges infringement of a single video which includes content in which Caner claims copyright. The four counts involve three videos, with one video being the subject of both Counts 1 and 3. Counts 3 and 4 apply to videos originally posted under Smathers Viddler.com (Viddler) and Youtube.com (Youtube) accounts.1 These videos were released to Smathers by the United States Marine Corps (Marines) on 20 July 2010 with no restrictions on their use and no copyright markings in response to a Freedom of Information Act request. (Smathers Decl. 3, attached as Ex. A.) Smathers posted the videos on the Internet on 18 August 2010, at the same time as he published a blog post incorporating the videos criticizing Caner for misrepresenting himself and his credentials. (Id. 4.) A little less than three years later, Caner filed takedown notices pursuant to the Digital Millennium Copyright Act (DMCA) with Viddler.com (Viddler) on 3 June 2013 and 12 June 2013 in order to challenge Smathers use

The Amended Complaint only technically applies to the videos posted on Viddler, but it does mention in passing that the videos were also posted on Smathers Youtube account, although it incorrectly represents when those videos were posted. (Am. Compl., Dkt. #13, 37 (filed Oct. 14, 2013).) To clarify, Smathers posted a backup copy of the videos on Youtube on 3 June 2013, but before receiving any notices from Viddler. (Smathers Decl. 5.) 2

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of the two videos. On 7 June 2013 and 13 June 2013 Viddler sent Caner notice of the submitted counter-notifications in which Smathers challenged the removal the posted videos and advised Caner that the videos would be reposted to Smathers account if Caner did not initiate legal action within ten business days. Counts 1 and 2 apply to videos posted under Autrys Youtube account. Similar to Counts 1 and 2, in May and June 2013 takedown notices were instituted by Caner, and Autry submitted counter-notifications which Youtube found sufficient to reinstate the two videos in question absent legal action by Caner. Following the takedown notice, Autry informed users about alternate sources of the video involved in Count 1 by stating that it was available from Smathers Youtube and Viddler accounts. This is the sole alleged association between the Defendants in relation to this lawsuit. ARGUMENT The legal principles governing severance and joinder are well-established. Defendants are only properly joined: (1) if any right to relief is asserted against them jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences; and (2) if any question of law or fact common to all defendants will arise in the action. Fed. R. Civ. P. 20(a)(2). If both of these requirements are not met joinder is improper even if there is no fraud in the pleadings and the plaintiff does have the ability to recover against each of the defendants. Crockett v. R.J. Reynolds Tobacco Co., 436 F.3d 529, 533 (5th Cir. 2006); Mannatech, Inc. v. Country Life, LLC, No. 10-533, 2010 U.S. Dist. LEXIS 75353, at *3-4 (N.D. Tex. July 26, 2010) (party is misjoined if conditions for permissive joinder set forth in Rule 20(a)(2) are not met).

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Rule 21 additionally provides district courts wide discretion to deal with the joinder of parties and claims, and this Court may sever claims if parties are improperly joined. See Fed. R. Civ. P. 21 (Misjoinder of parties is not a ground for dismissing an action. On motion or on its own, the court may at any time, on just terms, add or drop a party.). A court may remedy misjoinder by dropping the misjoined parties on such terms that are just, or by severing any claims against the misjoined parties and allowing them to proceed separately. H-W Tech., L.C. v. Apple, Inc., No. 11-651, 2012 U.S. Dist. LEXIS 105845, at *8 (N.D. Tex. July 5, 2012) (citing Acevedo v. Allsups Convenience Stores, Inc., 600 F.3d 516, 520 (5th Cir. 2010)). Even if the conditions for permissive joinder are met, a court retains the discretion to refuse joinder to avoid prejudice and delay, ensure judicial economy, or safeguard the principles of fundamental fairness. Id. Defendants argue that the transaction or occurrence prong of the Rule 20 joinder analysis has not been met. Autry and Smathers are not associates, nor have they ever worked together, let alone in a sufficiently meaningful manner with the subject matter of this suit. The extent of any relationship prior to the filing of this action consisted of occasional Twitter correspondence and the fact that Autry reposted a video on Youtube that Smathers had obtained from the Marines and posted on Viddler and Youtube. The Amended Complaint does not allege joint, several, or alternative liability against either Defendant arising out of the same transaction or occurrence as the other. Each Defendant will suffer prejudice if forced to defend himself while improperly joined to a Defendant who is not an associate, and whose own claims deal with copyrights of different videos, posted under different accounts, and in some respects, on different websites. Moreover, due to the unique facts of the case, there exist some arguments and defenses available to one Defendant and not necessarily the other and which would lead to unnecessary 4

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confusion if combineda fact capable on its own of constituting a sufficient other reason[ ] for ordering a severance.2 Wyndham Assocs. v. Bintliff, 398 F.2d 614, 618 (2d Cir. 1968); see also Applewhite v. Reichhold Chems., Inc., 67 F.3d 571, 574 (5th Cir. 1995) (holding that Rule 21 gives the court discretion to sever an action if it . . . might otherwise cause delay or prejudice); Aiello v. Kingston, 947 F.2d 834, 835 (7th Cir. 1991) (observing that [Rule] 21 allows a court to sever claims that are logically distinct); Otis Clapp & Son, Inc. v. Filmore Vitamin Co., 754 F.2d 738, 743 (7th Cir. 1985) (Rule 21 gives the court discretion to sever any claim and proceed with it separately if doing so will increase judicial economy and avoid prejudice to the litigants. (quoting 6 WRIGHT & MILLER, FEDERAL PRACTICE & PROCEDURE 1591)); 4 JAMES WM.MOORE ET AL., MOORES FEDERAL PRACTICE 21.05 (3d ed. 2013) (stating that the courts agree that Rule 21 may apply even in the absence of misjoinder or nonjoinder and [t]he trial court thus has great discretion to restructure an action to promote the efficient administration of justice). When faced with joinder of copyright, patent, and trademark claims in particular, courts across the nation find that these three types of claims should be treated with a presumption against joinder of independent parties whose only substantial connection is the fact that they are charged with infringing in a similar manner to another defendant. In the patent context, the Federal Circuit has recently made this explicit. See In re EMC Corp., 677 F.3d 1351, 1359 (Fed. Cir. 2012) (Claims against independent defendants (i.e., situations in which the defendants are not acting in concert) cannot be joined under Rule 20s transaction-or-occurrence test unless the facts underlying the claim of infringement asserted against each defendant share an aggregate of

For example, Smathers can argue that the Marines authorized him to publish the videos, whereas it is unclear if that argument is available to Autry. Therefore any apparent commonality 5

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operative facts . . . sameness of the accused products is not enough to establish that claims of infringement arise from the [the same transaction or occurrence] . . . [u]nless there is an actual link between the facts underlying each claim of infringement, independently developed products using differently sourced parts are not part of the same transaction, even if they are otherwise coincidentally identical). The Federal Circuit went on to emphasize that Rule 20s two separate requirements of both the transaction/occurrence and the common question of law or fact necessitate that a single common question of law or fact alone is insufficient to satisfy the Rule, and the mere fact of infringing the same patent is not enough. Id. The court further stated that aside from cases being overruled, district courts have generally agreed in cases involving patent, copyright, and trademark law. Id. (citing WiAV Networks, LLC v. 3Com Corp., No. 10-3448, 2010 U.S. Dist. LEXIS 110957, at *13-20 (N.D. Cal. Oct. 1, 2010) (independent defendants in patent case); Golden Scorpio Corp. v. Steel Horse Bar & Grill, 596 F. Supp. 2d 1282, 1285 (D. Ariz. 2009) (defendants who independently infringed the same trademark not part of the same transaction or occurrence); Arista Records LLC v. Does 14, 589 F. Supp. 2d 151, 15455 (D. Conn. 2008) (defendants who independently infringed the same copyright not part of the same transaction or occurrence)). The Arista Records case cited by the Federal Circuit and other recent copyright cases concerning the joinder of multiple defendants accused of internet music file-sharing counsel against joinder of such unrelated independent defendants. See 589 F. Supp. 2d at 153-55. In Arista Records the court conceded that each defendant was alleged to have committed violations of the same law (e.g., copyright law), by committing the same acts (e.g., the of fact or law may in fact be illusory, therefore implicating the second prong of the joinder test. 6

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downloading and distribution of copyrighted sound recordings owned by plaintiffs), and by using the same means (e.g., a file-sharing network) that each defendant accessed via the same ISP. Id. However the court emphasized that to satisfy the same transaction or occurrence test, the plaintiff must allege that the co-defendants conspired or acted jointly. Id. The court held that joinder was inappropriate because there was no such allegation of conspiracy or concert, let alone any connection between the actions as they occurred separately, unrelatedly, and at different times for different reasons with regard to different agents. Id. In a companion case to the Arista Records case, an Ohio court similarly held that the plaintiffs had failed to show that the copyright claims satisfied the first prong of Rule 20(a). The court stated that merely alleging that the Doe Defendants all used the same ISP and file-sharing network to conduct copyright infringement without asserting that they acted in concert was not enough to satisfy the same series of transactions requirement under the Federal Rules . . . . [T]he mere common use by otherwise separate and unrelated defendants of the same program in inflicting the same type of harm on a single plaintiff is inadequate to support a finding that the defendants actions were concerted. Arista Records, LLC v. Does 111, No. 072828, 2008 U.S. Dist. LEXIS 90183, at *19-20 (N.D. Ohio Nov. 3, 2008). The court in the Golden Scorpio trademark case cited by the Federal Circuit also feels that the trend is for courts to deal with these three intellectual property types of cases in similar ways when ruling on joinder issues, stating that the authority from other courts provides that allegations against multiple and unrelated defendants for acts of patent, trademark, and copyright infringement do not support joinder under Rule 20(a). Golden Scorpio Corp., 596 F. Supp. 2d at 1284-85 (citing, e.g., Colt Def. LLC v. Heckler & Koch Def., Inc., No. 04-258, 2004 U.S. Dist. LEXIS 28690, at *76 (E.D. Va. Oct. 22, 2004) (not the same transaction or occurrence where 7

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separate defendants had each independently infringed the same trademark); SB Designs v. Reebok Intl, Ltd., 305 F. Supp. 2d 888, 892 (N.D. Ill. 2004) (defendants alleged violation of the same trademark does not mean that plaintiffs claims against them arise out of the same transaction or occurrence); Androphy v. Smith & Nephew, Inc., 31 F. Supp. 2d 620, 623 (N.D. Ill. 1998) (joinder in patent suit improper because the claims did not arise from a common transaction or occurrence when the manufacturers were separate companies that independently designed, manufactured, and sold different products); N.J. Mach. Inc. v. Alford Indus., Inc., 21 U.S.P.Q.2d 2033, 2034-35 (D.N.J. 1991) (patent suit involving different machines, should be tried separately against each defendant); Paine, Webber, Jackson & Curtis v. Merrill Lynch, Pierce, Fenner & Smith, Inc., 564 F. Supp. 1358, 1371 (D. Del. 1983) (patent infringement by two unrelated parties based on different acts do not arise from the same transaction.); Magnavox Co. v. APF Elecs., Inc., 496 F. Supp. 29, 34 (N.D. Ill. 1980) (patent joiner improper where the items sold by one defendant retailer and those sold by another defendant were unrelated)). Another court in this District recently accepted the Federal Circuit approach in the patent context: The prevailing approach among numerous other courts is that the first prong of Rule 20(a)s joinder analysis is not satisfied where unrelated defendants, based on different acts, are alleged to have infringed the same patent . . . . [This] majority approach is in line with the LeahySmith America Invents Act (the America Invents Act), signed into law on September 16, 2011, after this action was filed, which provides, among other things, that accused infringers may not be joined in one action as defendants . . . or have their actions consolidated for trial, based solely on the allegations that they each have infringed the patent or patents in suit. 35 U.S.C. 299(b) . . . . After the filing of this motion and the passage of the America Invents Act, the Federal Circuit handed down its decision in In re EMC Corp. The Federal Circuit reasoned that the standard seemed to require little more than the existence of some similarity in the allegedly infringing

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products or processes, similarity which would exist simply because the same patent claims are alleged to be infringed. H-W Tech., 2012 U.S. Dist. LEXIS at *12 (emphasis added). Given the related nature of copyright claims to patent and trademark claims, this court should follow the majoritys common-sense approach and reject the joinder in this case as the only relevant fact bonding these defendants is the underlying copyright and the method of alleged violation. It would be analogous to a court allowing joinder simply because the same patent owner holds the patent on two different infringing items infringed by two different defendants. In this case the claims against Autry and Smathers are based on different alleged copyrights connected to three different videos. Each defendant has been separately and independently accused of infringing Caners copyright through their actions at different times on different websites in one respect, and through different accounts. Therefore because the first required element of Rule 20(a)(2) has not been met, this Court should sever the defendants in this case. It is concededly easier to argue that the second required element of Rule 20(a)(2) is met in this case because there may be a common question of fact or law involved. However as the foregoing has shown, a simple overlap of a fact or legal principle in a copyright, patent, or trademark case is not nearly enough to satisfy the requirement that the defendants actions were part of the same transaction or occurrence. Because Caners joinder is improper for failure to satisfy the transaction or occurrence test of Rule 20(a)(2), there is no need to determine whether any question of law or fact common to all defendants will arise in this action. See H-W Tech., 2012 U.S. Dist. LEXIS at *18-19.

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CONCLUSION Because Plaintiff has improperly joined the two Defendants, this honorable Court should order that one Defendant remain in this case and the other should be severed.3 For the foregoing reasons, such severance is in the interest of justice and fairness, and is in line with the underlying principles of joinder within the Federal Rules of Civil Procedure. Date: November 25, 2013 Respectfully submitted, /s/ Kelly B. McClanahan Kelly B. McClanahan, Esq. N.D. Tex. Bar #984704DC National Security Counselors 1200 South Courthouse Road Suite 124 Arlington, VA 22204 301-728-5908 240-681-2189 fax Kel@NationalSecurityLaw.org Counsel for Defendant Jason Smathers /s/ Joshua M. Autry Joshua M. Autry, Esq. Admitted Pro Hac Vice Clymer, Musser & Conrad, P.C. 408 W. Chestnut Street Lancaster, PA 17603 717-299-7101 717-299-5115 fax Josh.Autry@clymerlaw.com Counsel for Defendant Jonathan Autry

Defendants express no preference at this time for which Defendant remains and which is severed. 10