Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 1 of 18 1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 8 IN RE DMCA SUBPOENA TO REDDIT, INC., Case No. 19-mc-80005-SK ORDER REGARDING MOTION TO QUASH SUBPOENA 9 10 Regarding Docket No. 8 United States District Court Northern District of California 11 12 Now before the Court is a motion to quash filed by John Doe under his pseudonym, 13 Darkspilver (“Darkspilver”). Having carefully considered the parties’ papers, relevant legal 14 authority, and the record in the case, and having had the benefit of oral argument, the Court hereby 15 GRANTS IN PART and DENIES IN PART Darkspilver’s motion to quash for the reasons set 16 forth below. 17 BACKGROUND 18 On January 9, 2019, Petitioner Watch Tower Bible & Tract Society of Pennsylvania 19 20 (“Watch Tower”) filed this action to request that the Court issue a subpoena pursuant to the Digital Millennium Copyright Act (“DMCA”) to Reddit, Inc. to discovery the identity of Darkspilver (the 21 pseudonym used by someone who posted on Reddit). On January 16, 2019, the Clerk issued the 22 subpoena. Watch Tower served the subpoena on Reddit on January 24, 2010. (Dkt. 12 23 24 25 26 (Declaration of Paul D. Polidoro), ¶ 11.) Reddit has not yet provided Darkspilver’s identity and filed a document stating that it joins in Darkspilver’s motion to quash. Darkspilver was raised as a Jehovah’s Witness and has been a member of that community his1 whole life. (Dkt. 8-1 (Declaration of John Doe (Darkspilver)), ¶ 3.) Many of Darkspilver’s 27 28 1 It unknown whether Darkspilver is male or female, but Darkspilver has chosen the male United States District Court Northern District of California Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 2 of 18 1 friends and family members are currently active Jehovah’s Witnesses, and Darkspilver considers 2 himself a practicing Jehovah’s Witness. (Id.) 3 Darkspilver states that there are aspects of the organization of Jehovah’s Witnesses’ 4 teachings and practices that he questions and that he does not feel as though he can openly discuss 5 his views with other members of the community. (Id., ¶ 4.) He states that different opinions and 6 questions are strongly discouraged. (Id.) 7 Darkspilver states that, in his experience, people who voice their disagreement or doubts 8 “face rejection [by] and disapproval” from other members of the Jehovah’s Witness community, 9 including leadership and ordinary members. (Id.) Those who openly disagree with the 10 organization’s teachings publicly may be labelled “apostates” and be “excommunicated” or 11 “disfellowshipped” from the community. (Id.) Other Jehovah’s Witnesses, including friends and 12 family members, cut off ordinary social interactions with people who have been disfellowshipped. 13 (Id.) Darkspilver has personal knowledge of people who, after voicing certain opinions, have been 14 shunned by Jehovah’s Witnesses, including people with whom they had close relationships. (Id.) 15 Reddit is a social media platform where people can post to different forums. Reddit allows 16 people to use pseudonyms to communicate. For the past few years, Darkspilver has participated in 17 a Reddit forum for self-described former Jehovah’s Witnesses. (Id., ¶ 5.) Although Darkspilver 18 does not consider himself a “former” member, he believes that it is the only place he has been able 19 to discuss and debate matters related to the Jehovah’s Witnesses freely and openly. (Id.) 20 Darkspilver also chose Reddit because of his ability to communicate anonymously on the site. 21 (Id.) Darkspilver states that keeping his name and identity private is necessary for him to feel 22 comfortable participating in open discussions about religious teachings and practice. (Id.) 23 Darkspilver does not live in the United States. (Id., ¶ 6.) According to a map made by 24 participants in the Jehovah’s Witness forum, many of the participants reside in the United States. 25 (Id, ¶ 6; Dkt. 12, ¶ 9; Dkt. 12-4 (Ex. D (2,869 subscribers contributed to the map; 1,944 of those 26 subscribers reside in the United States).) Watch Tower states that, as of April 9, 2019, there were 27 28 nom de plume of John Doe. Thus, the Court will use male pronouns in this Order in referring to Darkspilver. 2 United States District Court Northern District of California Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 3 of 18 1 “34.1 thousand reported subscribers” to the Reddit forum, which is an increase from the 2 approximately 29,000 subscribers in November 2018 before Watch Tower issued the subpoena 3 regarding Darkspilver. (Dkt. 12, ¶¶ 6, 8.) Watch Tower issued notices of copyright infringement 4 under the DMCA to Darkspilver and to one other subscriber to the Reddit forum. (Id., ¶ 6.) 5 On February 7, 2019, Reddit informed Darkspilver of Watch Tower’s subpoena for 6 Darkspilver’s identifying information based on two of Darkspilver’s anonymous posts in the 7 Reddit forum: (1) an advertisement and (2) a chart. (Dkt. 8-1, ¶¶ 7, 8.) Watch Tower states that 8 both of these items are copyrighted works. (Dkt. 12, ¶ 2.) The advertisement, which was 9 published in a Watchtower magazine, encourages people to make donations to the Jehovah’s 10 Witnesses and directs readers to make donations through the website donate.jw.org. (Dkt. 8-1, ¶ 11 8; Dkt. 8-2 (Ex. A).) Darkspilver states that, to his knowledge, both the Watchtower magazine 12 and the advertisement are available for free online. (Dkt. 8-1, ¶ 8.) Watch Tower published this 13 advertisement on line at JW.ORG and on the back cover of the 32-page November 2018 issue of 14 The Watchtower – Announcing Jehovah’s Kingdom. (Dkt. 12, ¶ 2; see also 15 https://www.jw.org/en/publications/magazines/watchtower-study-november-2018.) Darkspilver’s 16 stated that his reason for posting the advertisement on the Reddit forum was: 17 to show how openly the organization was petitioning for financial donations from members, to illustrate the organization’s use of commercial advertising design, and to point out the organization’s encouragement of online donations. All of these represented major changes from the teachings and practices the organization had . . . espoused in the past. [Darkspilver] wanted to inform others and spark discussion about the organization’s tone, message, and fundraising practices. 18 19 20 21 (Dkt. 8-1, ¶ 9.) Darkspilver did not make any money by posting the advertisement on the forum. 22 (Id.) 23 Darkspilver also posted a screenshot of a chart with information about the personal data the 24 Jehovah’s Witness organization stores and processes along with citations to relevant provisions of 25 a European Union data privacy law called the General Data Protection Regulation. (Id., ¶ 10; Dkt. 26 8-4 (Ex. C).) The chart was an internal document that Watch Tower did not intend to publicly 27 distribute. (Dkt. 12, ¶ 2.) Darkspilver created this image by using data in an Excel file that he re28 3 United States District Court Northern District of California Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 4 of 18 1 formatted to make it more visually appealing and easy to read on a screen. The Excel file that 2 Darkspilver used to create this image is attached as Exhibit D to his declaration. (Dkt. 8-1, ¶ 10; 3 Dkt. 8-5 (Ex. D).) Darkspilver’s stated that his reason for posting the chart on the Reddit forum 4 was “to provide information to people in the Jehovah’s Witness community about the type of 5 information the organization actually stores and what it does with that information.” (Dkt. 8-1, ¶ 6 11.) Darkspilver is “aware of concerns that some former Jehovah’s Witnesses have with respect to 7 data the organization collects and stores,” including “records of the number of hours individual 8 Witnesses spend doing direct evangelical outreach” and “internal handling of many issues, 9 including abuse allegations.” (Id.) Darkspilver concludes: “Although some people are concerned 10 about data in the organization’s possession, I am concerned about excessive deletion of stored 11 information, largely because it might include information about past abuses (or the handling of 12 past abuses) that might be helpful in the future for discovering or substantiating claims.” (Id.) 13 Darkspilver has serious concerns about Watch Tower obtaining his identity. He believes 14 that it would chill his speech and would damage or destroy his relationships with friends and 15 family who remain active members of the Jehovah’s Witness community. (Id., ¶ 12.) Darkspilver 16 believes that Watch Tower would be able to use information from Reddit to determine his real 17 identity based on the information the Jehovah’s Witnesses have collected about him, including his 18 name and address. (Id.) Darkspilver explains that he has been part of the Jehovah’s Witness 19 community his whole life, and so the pain of social exclusion would be overwhelming. 20 Additionally, if his identity is revealed, Darkspilver would not feel comfortable talking about his 21 experience openly online. (Id.) Darkspilver would not have shared truthful information or 22 commentary regarding the Jehovah’s Witness organization if he knew that his name would be 23 revealed. (Id.) Darkspilver has already stopped posting on the former Jehovah’s Witness Reddit 24 forum and, if his identity is disclosed, he will not begin again. (Id.) 25 In support of his motion, Darkspilver also submits newspaper articles recounting stories 26 from former Jehovah’s Witnesses who were shunned or disfellowshipped from the religion. (Dkt. 27 8-6 (Declaration of Alexandra Moss); Dkt. 8-7 (Ex. A).) 28 Watch Tower submits messages from subscribers to the Reddit forum after Darkspilver 4 Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 5 of 18 1 filed this motion to quash the subpoena. (Dkt. 12, ¶ 7; Dkt. 12-1 (Ex. A).) Some subscribers 2 posted messages stating that their speech would not be chilled by Watch Tower’s efforts to obtain 3 the identity of people they accuse of copyright infringement, but it is unclear if those users are, 4 like Darkspilver, current members of the Jehovah’s Witnesses. (Dkt. 12-2 (Ex. B).) 5 Watch Tower is not Darkspilver’s local church and does not have the ability to 6 excommunicate him from his local congregation. (Dkt. 12, ¶ 10.) Watch Tower states that no 7 person who has been the subject of a DMCA subpoena has been excommunicated from his or her 8 local church as a result of Watch Tower’s learning his or her identity and that Watch Tower has 9 not disclosed to the public the names of individuals who were the subjects of DMCA subpoenas. 10 (Id.) ANALYSIS United States District Court Northern District of California 11 Watch Tower contends that the advertisement and the chart are protected by copyright and 12 13 that Darkspilver infringed Watch Tower’s copyright by posting them. Darkspilver counters that 14 his identity is protected by the First Amendment right to free speech and that his posting of these 15 items were non-infringing fair use. 16 A. Motion Is Not Untimely. Watch Tower argues that the Court should reject Darkspilver’s motion as untimely. 17 18 However, the authority upon which Watch Tower relies applies to parties. Darkspilver is not a 19 party to a lawsuit and was not even the recipient to of the subpoena. According to Watch Tower, 20 Darkspilver should have moved to quash before the return date on the subpoena – February 15, 21 2019. But Darkspilver did not even have notice of the subpoena until after that date, on February 22 22, 2019. Moreover, it is undisputed that Reddit has not yet responded to the subpoena. 23 Therefore, the Court finds that the motion is not untimely and will address the merits of 24 Darkspilver’s motion to quash. 25 B. 26 Whether the First Amendment Applies. Watch Tower disputes that Darkspilver’s speech is entitled to any protection under the 27 First Amendment. According to Watch Tower, because Darkspilver resides outside of the United 28 States, applying the First Amendment to his speech would be impermissible as an extraterritorial 5 Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 6 of 18 1 application of American law. For support, Watch Tower cites two cases evaluating different 2 constitutional provisions – the Fourth and the Fifth Amendments. See Johnson v. Eistrager, 339 3 U.S. 763 (1950) (Fifth Amendment); United States v. Verdugo-Urquidez, 494 U.S. 259 (1990) 4 (Fourth Amendment). United States District Court Northern District of California 5 In Johnson, the Supreme Court held that military prisoners captured abroad were not 6 entitled to protection under the Fifth Amendment because they were: (a) enemy aliens; (b) had 7 never been or resided in the United States; (c) were captured outside of the United States and held 8 in military custody as war prisoners; and (d) were tried and convicted by a Military Commission 9 sitting outside the United States for war crimes committed abroad. Johnson, 339 U.S. at 777. 10 Under those circumstances, the Supreme Court rejected the exterritorial application of the Fifth 11 Amendment. Id. at 784. 12 In United States v. Verdugo-Urquidez, the Supreme Court noted the nature of the Fourth 13 Amendment: “It prohibits ‘unreasonable searches and seizures’ . . . and a violation of the 14 Amendment is ‘fully accomplished’ at the time of an unreasonable governmental intrusion. . . . 15 [T]herefore, if there were a constitutional violation, it occurred solely in Mexico.” Verdugo- 16 Urquidez, 494 U.S. at 264 (internal citations omitted). In that case, the Court rejected the 17 exterritorial application of the Fourth Amendment to a search conducted in Mexico of a Mexican 18 resident and citizen’s homes. Id. at 262, 274-75. 19 In contrast, here, the constitutional right at stake is a different constitutional amendment – 20 the First Amendment – and the asserted violation does not concern merely extraterritorial conduct. 21 The subpoena here was issued by a Court in the United States, on behalf of a United States 22 company (Watch Tower) and was directed against another United States company (Reddit). 23 Moreover, the First Amendment protects the audience as well as the speaker. See Desai v. 24 Hersh, 719 F. Supp. 670, 676 (N.D. Ill. 1989) (“The first amendment shields the actions of 25 speakers for the benefit of their audience.). As another court in this District explained: 26 27 28 The First Amendment does protect the public of this country. As Mr. Justice Brennan pointed out in A Quantity of Copies of Books v. State of Kansas, supra, there is a ‘right of the public in a free society to unobstructed circulation of nonobscenebooks’ (emphasis added). The First Amendment surely was designed to protect the rights of 6 Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 7 of 18 readers and distributors of publications no less than those of writers or printers. Indeed, the essence of the First Amendment right to freedom of the press is not so much the right to print as it is the right to read. The rights of readers are not to be curtailed because of the geographical origin of printed materials. 1 2 3 United States v. 18 Packages of Magazines, 238 F. Supp. 846, 847-48 (N.D. Cal. 1964). In other 4 words, the protections of the First Amendment extend beyond the personal rights of the speaker. 5 Bursey v. United States, 466 F.2d 1059, 1083-84 (9th Cir. 1972). As the Ninth Circuit explained: 6 The First Amendment interests in this case are not confined to the personal rights of [Plaintiffs]. . . . Freedom of the press was not guaranteed solely to shield persons engaged in newspaper work from unwarranted governmental harassment. The larger purpose was to protect public access to information. Freedom of association was secured not only to protect the privacy of those who assert their rights in litigation, but also to shelter all persons from unjustifiable governmental prying into their associations with lawful groups. In the context of litigation, vindication of these public rights secured by the First Amendment is primarily committed to persons who are also asserting their individual constitutional rights. 7 8 9 10 United States District Court Northern District of California 11 12 Id. 13 Although the exact percentage of subscribers to Reddit forum who live in United States is 14 unknown, the only data before the Court suggests that a substantial number are United States 15 residents. (Dkt. 8-1, ¶ 6; Dkt. 12, ¶ 9; Dkt. 12-4 (map showing that more than two-thirds of the 16 subscribers who provided their information reside in the United States) Based on the involvement 17 18 of the United States Court’s procedures by and against United States companies and the audience of United States residents, as well as the broad nature of the First Amendment’s protections, the 19 Court finds that the First Amendment is applicable here. 20 C. 21 Determining the First Amendment Test. “It is well established that the First Amendment protects the right to anonymous speech.” 22 Art of Living Found. v. Does 1-10, 2011 WL 5444622, at *3 (N.D. Cal. Nov. 9, 2011) (citing 23 McIntyre v. Ohio Elections Comm’n, 514 U.S. 334, 342 (1995) (“An author’s decision to remain 24 anonymous, like other decisions concerning omissions or additions to the content of a publication, 25 is an aspect of the freedom protected by the First Amendment”). Moreover, the protection for 26 anonymous speech applies to speech on the internet. In re Anonymous Online Speakers, 661 F.3d 27 1168, 1172-73 (9th Cir. 2011) (“[O]nline speech stands on the same footing as other speech – 28 7 Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 8 of 18 1 there is ‘no basis for qualifying the level of First Amendment scrutiny that should be applied’ to 2 online speech.”) (quoting Reno v. Am. Civil Liberties Union, 521 U.S. 844, 870 (1997)). “As with 3 other forms of expression, the ability to speak anonymously on the Internet promotes the robust 4 exchange of ideas and allows individuals to express themselves freely without “fear of economic 5 or official retaliation ... [or] concern about social ostracism.” Id. (quoting McIntyre, 514 U.S. at 6 341-42). United States District Court Northern District of California 7 “The right to speak, whether anonymously or otherwise, is not unlimited, however, and the 8 degree of scrutiny varies depending on the circumstances and the type of speech at issue.” In re 9 Anonymous Online Speakers, 661 F.3d 1168, 1173 (9th Cir. 2011). “[T]he nature of the speech 10 should be the driving force in choosing a standard by which to balance the rights of anonymous 11 speakers in discovery disputes.” Id. at 1177; see also Signature Mgmt. Team, LLC v. Automattic, 12 Inc., 941 F. Supp. 2d 1145, 1154 (N.D. Cal. 2013) (noting that courts begin “by considering the 13 nature of the speech before determining the appropriate standard”). 14 Courts apply a rigorous or “most exacting” standard when the speech is political, religious, 15 or literary. In contrast, commercial speech is afforded less protection. In re Anonymous Online 16 Speakers, 661 F.3d at 1177. Where, as here, the speech touches on a matter of public interest, 17 courts in this district have applied a stronger standard than if the speech were commercial. See 18 Highfields Capital Management, L.P. v. Doe, 385 F. Supp. 2d 969 (N.D. Cal. 2005); see also Art 19 of Living Found. v. Does 1-10, 2011 WL 5444622, at *7 (N.D. Cal. Nov. 9, 2011). 20 In Highfields, the speech at issue was postings of “sardonic commentary on a public 21 corporation; through irony and parody, these bulletin board postings express[ed] dissatisfaction 22 with the performance of the stock and the way company executives choose to spend company 23 resources.” Highfields, 385 F. Supp. 2d at 975. The speech also expressed disapproval or 24 criticism of the corporation’s largest single shareholder. Id. The speech expressed “views in 25 which other members of the public may well be interested” and that the speaker had the right to 26 express anonymously. Id. The court noted speaker’s rights to speak anonymously on these topics 27 were vulnerable and precarious and “close to the central societal values that animate our 28 Constitution.” Id. 8 Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 9 of 18 In Art of Living Foundation, the speakers were former students and teachers of the United States District Court Northern District of California 1 2 organization, Art of Living Foundation, who anonymously criticized the organization and its 3 leader on an internet blog. Id., 2011 WL 544622 at * 1. The court cited an opinion from the 4 California Court of Appeal for the proposition that “although matters of public interest include 5 legislative and governmental activities, they may also include activities that involve private 6 persons and entities, especially when a large, powerful organization may impact the lives of many 7 individuals.” Id., 2011 WL 544622 at * 6 (quoting Church of Scientology v. Wollersheim, 42 Cal. 8 App. 4th 628, 649 (1996) (allegations that the Church of Scientology harmed and abused its 9 members was speech in connection with a “public issue”)). Considering that the organization had 10 chapters in 140 countries and was one of the United Nations’ largest volunteer-based non- 11 governmental organizations, the court held that the speakers’ condemnation of the organization 12 was clearly a matter of public interest. Id., 2011 WL 544622 at * 6. Here, Darkspilver anonymously posted to the Reddit forum to comment on and foster 13 14 thoughtful and critical dialogue on the practices of Jehovah’s Witnesses. The Court finds that 15 Darkspilver’s speech was a matter of public interest. Therefore, the Court will apply the following 16 two-part test articulated in Highfields and Art of Public Living: 17 (1) The [subpoenaing party] must produce competent evidence supporting a finding of each fact that is essential to a given cause of action; and (2) if the [subpoenaing party] makes a sufficient evidentiary showing, the court must compare the magnitude of the harms that would be caused to the competing interests by a ruling in favor of the [subpoenaing party] and by a ruling in favor of the [anonymous speaker]. 18 19 20 21 Art of Living Found, 2011 WL 5444622, at *7 (citing Highfields, 385 F. Supp. 2d at 975-76). 22 D. Evaluating Darkspilver’s First Amendment Challenge. Evidentiary Basis for Watch Tower’s Copyright Claims. 23 1. 24 As the court in Highfields explained, under this prong of the test: 25 26 27 the plaintiff must adduce competent evidence – and the evidence plaintiff adduces must address all of the inferences of fact that plaintiff would need to prove in order to prevail under at least one of the causes of action plaintiff asserts. In other words, the evidence that plaintiff adduces must, if unrebutted, tend to support a finding of each fact that is essential to a given cause of action. The court may not 28 9 Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 10 of 18 1 2 United States District Court Northern District of California 3 enforce the subpoena if, under plaintiff’s showing, any essential fact or finding lacks the requisite evidentiary support. Highfields, 385 F. Supp. 2d at 975-76 (emphasis in original). To establish a prima facie case of copyright infringement, a plaintiff must show (1) 4 ownership of a valid copyright, and (2) violation by the alleged infringer of at least one of the 5 exclusive rights granted to copyright owners by the Copyright Act. UMG Recordings, Inc. v. 6 Augusto, 628 F.3d 1175, 1178 (9th Cir. 2011). Watch Tower argues that it laid out a prima facie 7 case of copyright infringement in its subpoena application. (Dkt. 11 (Watch Tower’s Opp.) at pp. 8 13-14.) However, the application does not actually address the registration of any copyright or 9 otherwise show that either the advertisement or the chart is a copyright protected work. The 10 application simply states that that Darkspilver’s posts infringe a copyright held by Watch Tower 11 and cite to the declaration of Paul D. Polidoro in support of the subpoena application. (Dkt. 1 12 (Subpoena Application) at p.1.) The declaration does not address the copyright protections of 13 either the advertisement or the chart. (Dkt. 2 (Declaration of Paul D. Polidoro in Support of 14 Subpoena Application).) In the declaration in support of its opposition to the motion to quash, Mr. 15 Polidoro states that “Watch Tower is the copyright owner of the both” the advertisement and the 16 chart. (Dkt. 12, ¶ 2.) This brief statement is the full extent of Watch Tower’s evidence in support 17 of its claim that it owns a valid copyright in the record before the Court. 18 19 a. Advertisement Darkspilver does not contest that Watch Tower registered the publication in which the 20 advertisement was included and thus does not contest copyright ownership for the advertisement. 21 (Dkt. 8 (Mot. to Quash) at p. 10.) “A certificate of registration from the U.S. Copyright Office 22 raises the presumption of copyright validity and ownership.” Unicolors, Inc. v. Urban Outfitters, 23 Inc., 853 F.3d 980, 988 (9th Cir. 2017). Therefore, for purposes of this motion, the Court will 24 assume that the advertisement is part of a registered work. 25 Moreover, Darkspilver does not contest that he posted copies of the advertisement on the 26 Reddit forum. Therefore, the Court finds that Watch Tower has demonstrated a prima facie case 27 of copyright infringement for the advertisement. Darkspilver argues that Watch Tower has not 28 made a sufficient showing because his posting of the advertisement fell under the doctrine of fair 10 Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 11 of 18 1 use. However, Darkspilver bears the burden to prove the defense of fair use. Therefore, Watch 2 Tower does not need to counter this defense in order to demonstrate a prima facie case of 3 copyright infringement.2 Therefore, the Court finds that Watch Tower has met its showing under 4 the first prong as to the advertisement. b. Chart 5 It is not clear that the chart meets the minimum standards of originality required for United States District Court Northern District of California 6 7 copyright protection. Watch Tower has not yet registered the chart. Therefore, the chart is not 8 entitled to a presumption of copyright validity and Watch Tower must submit evidence to make 9 the requisite showing. 10 In Victor Lalli Enterprises, Inc. v. Big Red Apple, Inc., 936 F.2d 671, 673 (2d Cir. 1991), 11 the court held that a chart did not merit copyright protection because it was merely a compilation 12 of preexisting facts. Although a compilation of preexisting facts could meet the minimum for 13 copyright protection if it features original selection, coordination or arrangement of those facts, the 14 court found that the plaintiff’s compilation failed to meet this minimum requirement. “Although 15 novelty is not required, some ‘modicum of creativity’ is necessary to transform simple 16 compilation into copyrightable expression.” Id. (quoting Feist Publications, Inc. v. Rural 17 Telephone Service Co., 499 U.S. 340 (1991)). The court held that the charts were not entitled to 18 copyright protection because the format of the charts lacked selectivity in what was reported and 19 in how it was reported. Id. Here, Watch Tower summarily argues that “the layout, design, and word choice [of the 20 21 chart] are all creative in nature,” with no supporting evidence. In the absence of any supporting 22 evidence, the Court finds that Watch Tower has not met its burden to show, with competent 23 evidence, its ownership of a valid copyright in the chart. Therefore, Watch Tower fails to 24 demonstrate a prima facie case of copyright infringement with respect to the chart. 25 /// 26 27 28 Although fair use is not a traditional “affirmative defense,” the “burden of proving fair use is always on the putative infringer.” Lenz v. Universal Music Corp., 815 F.3d 1145, 1153 (9th Cir. 2016) (emphasis in original) (quoting Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1542 n. 22 (11th Cir. 1996)). 11 2 Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 12 of 18 1 2 3 4 5 6 7 8 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2. Balancing of Harms. Because the Court finds that Watch Tower demonstrates a prima facie case of copyright infringement with respect to the advertisement, the Court will address the second prong – comparing the magnitude of the harms that would be caused to the competing interests by a ruling in favor of Watch Tower and by a ruling in favor of Darkspilver. Darkspilver presents evidence to show that revealing his identity to Watch Tower would chill his speech on the Reddit forum. He selected that forum because it was a place where he could communicate anonymously with other current and former Jehovah’s Witnesses. (Dkt. 8-1, ¶ 5.) He is concerned that, if Watch Tower discovers his identity, the revelation of his identity would damage or destroy his relationships with friends and family who are active members of the Jehovah’s Witness community. (Id., ¶ 12.) Speaking anonymously is necessary for him to feel comfortable participating in open discussions about religious teachings and practice. (Id., ¶ 5.) Darkspilver has already stopped posting on the Reddit forum and will not begin again if his identity is revealed. (Id., ¶ 12.) Watch Tower disputes Darkspilver’s assertion that his free speech will be chilled by citing to statements made by other individuals posting on the Reddit forum stating that they would not be deterred from speaking and by the fact that the size of the forum has grown since Watch Tower issued the subpoena. (Dkt. 12-2.) Considering that this is a forum for former Jehovah’s Witnesses – people who have already left the religion and, presumably, the community – it is not surprising that some expressed that they would not be deterred from speaking if their identities were revealed. But select quotes from others do not undermine Darkspilver’s expressed concern over speaking openly about his views on Jehovah Witness’ practices. Moreover, to the extent other current Jehovah’s Witnesses are publishing anonymous posts on this Reddit forum, they also might have concerns similar to Darkspilver. Watch Tower further argues that Watch Tower is not Darkspilver’s local church and has no ability to excommunicate him from his local congregation. (Polidoro Decl., ¶ 10.) Nevertheless, Darkspilver has expressed substantial concerns over having his identity revealed to anyone in the Jehovah’s Witness community. The Court finds that Darkspilver has demonstrated significant 12 Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 13 of 18 1 harms if his identity were revealed publicly or even if it were revealed to Jehovah’s Witnesses in 2 his congregation. United States District Court Northern District of California 3 On the other hand, if Watch Tower cannot determine Darkspilver’s identity, Watch Tower 4 would lose its ability to enforce its copyright. However, in evaluating the balance of the harms, 5 the Court finds that it should address Darkspilver’s defense of fair use. As the Ninth Circuit has 6 made clear, although Darkspilver bears the burden of demonstrating fair use, “for purposes of the 7 DMCA – fair use is uniquely situated in copyright law so as to be treated differently than 8 traditional affirmative defenses. . . . [F]air use is ‘authorized by law[.]’” Lenz, 815 F.3d at 1153; 9 see also id. at 1151 (“Fair use is not just excused by the law, it is wholly authorized by the law.”) 10 Moreover, because fair use is a non-infringing use authorized by statute, a copyright holder must 11 consider the existence of fair use before issuing a takedown notification under the DMCA, which 12 is required before obtaining a subpoena. Id. at 1153; see also 17 U.S.C. §§ 512(c)(3)(A), 13 512(h)(4). If Darkspilver’s posting of the advertisement was fair use, then it was not infringing 14 and Watch Tower suffered no harm. 15 Moreover, the fair use doctrine is also relevant because Darkspilver is asserting a First 16 Amendment right to comment on the advertisement. As the court in Art of Public Living 17 explained, while copyright infringement is not protected by the First Amendment, “copyright law 18 contains built-in First Amendment accommodations.” Id., 2011 WL 5444622, at *6 (quoting 19 Eldred v. Ashcroft, 537 U.S. 186, 219-20 (2003)). Of those protections or accommodations of the 20 First Amendment, “[p]erhaps the most important is the doctrine of fair use, which allows the 21 public to use copyrighted works ‘for purposes such as criticism, comment, news reporting, 22 teaching . . . and scholarship.’” Id., 2011 WL 5444622, at *6 (quoting 17 U.S.C. § 107) (citing 23 Elvis Presley Enters. v. Passport Video, 349 F.3d 622, 626 (9th Cir. 2003) (“First Amendment 24 concerns in copyright cases are subsumed within the fair use inquiry.”); see also Nihon Keizai 25 Shimbun v. Comline Bus. Data, Inc., 166 F.3d 65, 74 (2d Cir. 1999) (“First Amendment concerns 26 are protected by and coextensive with the fair use doctrine.”). 27 28 “The fair use exception excludes from copyright restrictions certain works, such as those that criticize and comment on another work.” Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 13 Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 14 of 18 1 792, 799 (9th Cir. 2003) (citing 17 U.S.C. § 107). To determine whether a work constitutes fair 2 use, courts “engage in a case-by-case analysis and a flexible balancing of relevant factors.” Id. at 3 800. The four factors are: 4 5 6 7 8 9 (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. Mattel, 353 F.3d at 800 (citations omitted). The factors are “to be explored, and the results weighed together, in light of the purposes of copyright.” Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 578 (1994). “[F]air use is a mixed question of fact and law.” Mattel, 353 F.3d at 800 10 (citation omitted). 11 United States District Court Northern District of California a. Purpose and Character of Use. 12 13 14 The first factor considers the purpose for using the work. “Section 107 provides that use of copyrighted materials for “purposes such as criticism, . . . scholarship, or research, is not an infringement of copyright.” New Era Publications Int’l, ApS v. Carol Pub. Grp., 904 F.2d 152, 15 156 (2d Cir. 1990) (finding factor one favored the accused infringer who declared his reasons for 16 17 18 19 20 including the copyrighted material were to “mak[e] his point that Hubbard was a charlatan and the Church was a dangerous cult”); see also Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 799 (9th Cir. 2003) (“The fair use exception excludes from copyright restrictions certain works, such as those that criticize and comment on another work.”) (citing 17 U.S.C. § 107). This factor considers whether the use was transformative, that is, whether it “adds something new, with a 21 further purpose or different character, altering the first with new expression, meaning, or 22 23 24 25 26 message.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994); see also SOFA Entm’t, Inc. v. Dodger Prods., Inc., 709 F.3d 1273, 1278 (9th Cir. 2013) (“The central inquiry under the first factor is whether the new work is ‘transformative.’”). Although not conclusive, the first factor also requires that “the commercial or nonprofit character of an activity” be weighed in any fair use decision. Sony Corp. of America v. Universal 27 City Studios, Inc., 464 U.S. 417, 448-49 (1984). Noncommercial, nonprofit activity is 28 14 Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 15 of 18 1 presumptively fair. Id. at 449. Here, Darkspilver’s use was not commercial. Therefore, his use was presumptively fair. United States District Court Northern District of California 2 3 Moreover, his stated purpose was to evoke conversation about the Jehovah’s Witnesses 4 fundraising methods. He wanted “to show openly the organization was petitioning for financial 5 donations from members, to illustrate the organization’s use of commercial advertising design, 6 and to point out the organization’s encouragement of online donations.” (Dkt. 8-1, ¶ 9.) 7 According to Darkspilver, these fundraising methods were a major change from the teachings and 8 practices the Jehovah’s Witnesses had espoused in the past. (Id.) He posted the advertisement to 9 “inform others and spark discussion about the organization’s tone, message, and fundraising 10 practices.” (Id.) Watch Tower does not challenge this motivation. Posting copyrighted material 11 for criticism or to spark conversation about it are purposes that the fair use statute authorizes. On the other hand, Darkspilver did not alter or strongly “transform” the advertisement. He 12 13 posted it in full with the caption: ““WHAT GIFT CAN WE GIVE TO JEHOVAH?”... guess 14 what? ... WT Magazine NOVEMEBER 2018, Full Backpage ‘Advert’” (Dkt. 8-1, ¶ 8; Dkt. 8-3 15 (Ex. B).) There is no factual dispute about the posting. However, because of the nonprofit nature 16 of Darkspilver’s posting and his stated purpose to evoke conversation, the Court finds that this 17 factor weighs in favor of Darkspilver. 18 b. Nature of the Copyrighted Work. The second factor “recognizes that creative works are ‘closer to the core of intended 19 20 copyright protection’ than informational and functional works.” Dr. Seuss Enterprises, L.P. v. 21 Penguin Books USA, Inc., 109 F.3d 1394, 1402 (9th Cir. 1997) (quoting Campbell, 510 U.S. at 22 586). “Whether or not a work is published is critical to its nature under factor two, the scope of 23 24 fair use is broader for published works.” New Era Publications, 904 F.2d at 157 (citing Harper & 25 Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 564 (1985)). Thus, “even substantial 26 quotations might qualify as fair use in a review of a published work.” Harper & Row, 471 U.S. at 27 564. 28 Here, the advertisement was published in November 2018. Moreover, the advertisement 15 Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 16 of 18 1 was largely informational and functional, directing readers how to make donations online. 2 Therefore, this factor also weighs in favor of Darkspilver. 3 4 The third factor “asks whether the amount and substantiality of the portion used in relation 5 to the copyrighted work as a whole, are reasonable in relation to the purpose of copying.” Mattel, 6 353 F.3d at 803 (internal citations and quotation marks omitted). “This factor has both a 7 quantitative and a qualitative component, so that courts have found that use was not fair where the 8 quoted material formed a substantial percentage of the copyrighted work . . . or where the quoted 9 material was ‘essentially the heart of the copyrighted work.’” New Era Publications, 904 F.2d at 10 United States District Court Northern District of California c. Amount and Substantiality of Portion Used. 158 (citing Harper & Row, 471 U.S. at 565). 11 Here, even though Darkspilver copied the entire advertisement, it was only a small portion 12 of the copyrighted work as a whole – the thirty-two page November 2018 Watch Tower magazine. 13 The advertisement was on the last page of the magazine. Again, there is no factual dispute about 14 this issue. Nor was the advertisement qualitatively the heart of the published magazine, which 15 was full of articles discussing matters of faith for Jehovah’s Witnesses. In contrast, the 16 advertisement described how to make online donations to the organization. 17 18 d. Effect of Use on Potential Market for or Value of Copyrighted Work. The fourth factor “asks whether actual market harm resulted from the defendant’s use of 19 plaintiff’s protected material and whether ‘unrestricted and widespread conduct of the sort 20 engaged in by the defendant . . . would result in a substantially adverse impact on the potential 21 market’ for the original or its derivatives.” Mattel, 353 F.3d at 804 (quoting Campbell, 510 U.S. 22 at 590). A use that has no demonstrable effect upon the potential market for, or the value of, the 23 copyrighted work need not be prohibited in order to protect the author’s incentive to create. Id. at 24 450. Therefore, “[w]hat is necessary is a showing by a preponderance of the evidence that some 25 meaningful likelihood of future harm exists. If the intended use is for commercial gain, that 26 likelihood may be presumed. But if it is for a noncommercial purpose, the likelihood must be 27 demonstrated.” Id. at 451 (emphasis in original). 28 Watch Tower has not demonstrated any actual harm or likelihood of future harm. It argued 16 United States District Court Northern District of California Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 17 of 18 1 generally at the hearing that the harm it suffered from people infringing on its copyrights was 2 directing others away from its website. However, the advertisement that Darkspilver posted 3 directs people to visit the website to make a donation. Nevertheless, Watch Tower has not yet had 4 a chance to conduct discovery on its copyright claim or to engage an expert to conduct a market 5 analysis. Perhaps Watch Tower, if provided the opportunity, could demonstrate that fewer people 6 visited its website after Darkspilver’s posting. The Court is hesitant to deprive Watch Tower of 7 the opportunity to develop its claim and supporting evidence before it has even filed suit. 8 In balancing the harms, while considering the fair use defense, the Court finds that they tip 9 sharply in Darkspilver’s favor. However, the Court notes that Darkspilver’s concerns stem largely 10 out of his fear that those in his congregation will discover his identity and shun him. If Reddit 11 reveals Darkspilver’s identity to Watch Tower’s counsel, under an “attorney’s eyes only” 12 restriction, then any harm to Darkspilver would be alleviated. This restriction would enable 13 Watch Tower to pursue its copyright claim without causing harm to Darkspilver. Therefore, the Court HEREBY GRANTS IN PART and DENIES IN PART Darkspilver’s 14 15 motion to quash. Reddit shall respond to the subpoena and provide the requested information to 16 Watch Tower’s counsel. However, only attorneys of record in this matter may obtain 17 information about Darkspilver’s identity. Watch Tower’s attorneys of record shall not to 18 disclose Darkspilver’s identity to anyone else without approval in a Court Order from this Court. 19 For example, Watch Tower’s attorneys of record may not disclose Darkspilver’s identity even to 20 its client, staff, or expert witnesses without approval in a Court Order from this Court.3 21 /// 22 /// 23 /// 24 /// 25 26 27 28 Watch Tower claimed at the hearing that it plans to disclose Darkspilver’s identity to its forensic experts so that Watch Tower can determine how Darkspilver obtained confidential information in the chart and prevent further disclosure of that confidential information. This purpose is not related at all to a copyright issue, and for that reason, the Court rejects that form of disclosure. 17 3 Case 3:19-mc-80005-SK Document 18 Filed 05/17/19 Page 18 of 18 1 If Watch Tower elects to file a lawsuit against Darkspilver, the Court directs Watch Tower 2 to seek to file the suit under his pseudonym and to keep his actual identity under seal, for 3 attorney’s eyes only. Moreover, Watch Tower is admonished that any violation of this Order will 4 be sanctioned and that this Court retains jurisdiction over any potential violation of this Order. 5 6 7 8 IT IS SO ORDERED. Dated: May 17, 2019 ______________________________________ SALLIE KIM United States Magistrate Judge 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 18