In re DMCA Section 512(H) Subpoena to Youtube (Google, Inc.)

581 F.Supp.3d 509

IN RE: DMCA SECTION 512(H) SUBPOENA TO YOUTUBE (GOOGLE, INC.)

7:18-mc-00268 (NSR)

United States District Court, S.D. New York.

Signed January 18, 2022

Malcolm Seymour, Foster Garvey P.C., New York, NY, for John Doe.

OPINION & ORDER

NELSON S. ROMÁN, United States District Judge

This action arises out of a subpoena request under the Digital Millennium Copyright Act ("DMCA") to identify an alleged infringer of copyrights held by Watch Tower Bible and Tract Society of Pennsylvania ("Watch Tower"), an organization that publishes religious materials for Jehovah's Witnesses. Movant John Doe, a lapsed Jehovah's Witness who publishes satirical videos critical of the religious denomination on YouTube, moves to quash the subpoena issued on June 19, 2018, or, in the alternative, for leave to proceed anonymously. (ECF No. 19.) For the following reasons, the Court GRANTS Movant's motion to quash the subpoena.

BACKGROUND

I. The Original Works

Between August 2017 and January 2018, Watch Tower created the following four original works, each of which it subsequently registered with the U.S. Copyright Office on August 3, 2018: (i) "Never Alone" (Copyright Registration No: PA0002131662); (ii) "Allan Boyle: Deep Study for a Clearer Picture" (Copyright Registration No: PA0002131659); (iii) "Keep a Tight Grip—Through Effective Personal Study" (Copyright Registration No: PA0002131853); and (iv) "Mark Noumair: Keep ‘a Tight Grip on the Word of Life’ " (Copyright Registration No: PA0002131665). (See Polidoro Decl., Ex. B, ECF No. 20-2.). Watch Tower further published these four works as a compilation with additional footage titled "JW Broadcasting – July 2018," which it also registered with the U.S. Copyright Office on August 10, 2018 (Copyright Registration No: PA0002132168). (See id. , Ex. C, ECF No. 20-3.).

The subject matter of these works is derived from the Bible and the teachings of Jehovah's Witnesses, but they all consist of creative, expressive, and non-factual works. (See id. ¶ 7, ECF No. 20.) For example, "Never Alone" is a music video depicting the story of Joseph from the Book of Genesis with musical and actor performances, costumes, sets, lighting, and sound design. (See JW, Never Alone , https://www.jw.org/en/library/videos/#en/mediaitems/VODOriginalSongs/pub-osg_43_VIDEO (last visited Jan. 13, 2022).) The work titled "Allan Boyle: Deep Study for a Clearer Picture" depicts an interview of the late artist, who discusses how studying the Bible helped him create his religious artwork. (See JW, Allan Boyle: Deep Study for a Clearer Picture , https://www.jw.org/en/library/videos/#en/mediaitems/VODIntExpArchives/pub-jwb_201807_4_VIDEO (last visited Jan. 13, 2022).) The work titled "Keep a Tight Grip—Through Effective Personal Study" depicts several Jehovah's Witnesses discussing their techniques to study the Bible and the benefits they obtain from doing so. (See JW, Keep a Tight Grip—Through Effective Personal Study , https://www.jw.org/en/library/videos/#en/mediaitems/VODBiblePrinciples/pub-jwb_201807_6_VIDEO (last visited Jan. 13, 2022).) The work titled "Mark Noumair: Keep ‘a Tight Grip on the Word of Life’ " depicts Mr. Noumair discussing why studying the Bible is important for Jehovah's Witnesses and the methods taught at their missionary Gilead School to do so properly. (See JW, Mark Noumair: Keep "a Tight Grip on the Word of Life" , https://www.jw.org/en/library/videos/#en/mediaitems/StudioTalks/pub-jwb_201807_2_VIDEO (last visited Jan. 13, 2022).) And finally, the JW Video is a fifty-three-minute compilation of the previous four works presented as a single broadcasting program for July 2018, which is part of a series of monthly programs for Watch Tower's viewers. (See JW, JW Broadcasting – July 2018 , https://www.jw.org/en/library/videos/#en/mediaitems/StudioMonthlyPrograms/pub-jwb_201807_1_VIDEO (last visited Jan. 13, 2022) [hereinafter, the "JW Video"].)

II. The Allegedly Infringing Work

Under the pseudonym of "Kevin McFree," Movant publishes videos on YouTube featuring stop-frame Lego animations set in a fictitious village called "Dubtown" that satirize and criticize the practices of Jehovah's Witnesses. (See Seymour Decl. ¶¶ 6, 8, Ex. 5, ECF Nos. 18, 18-5.) On May 18, 2018, Movant posted a video titled "DUBTOWN – Family Worship July Broadcast" (hereinafter, the "Dubtown Video"). (See id. ¶ 9.) This thirteen-minute video depicts Lego characters viewing excerpts of the JW Video (mainly those portraying Watch Tower's other four works), over which Movant interjected, superimposed, and overdubbed parodic commentary. (See id. ¶ 11, Ex. 11, ECF No. 18-11.) Among other topics, the Dubtown Video criticizes Jehovah's Witnesses’ depictions of violence against women, the removal of a man of African descent from the denomination's iconography, the denomination's attitude toward technology, and its attitude toward outside academic pursuits among its followers. (See id. , Ex. 11.)

III. Procedural History

After learning about the Dubtown Video, Watch Tower sent a copyright infringement DMCA takedown notice to Google on June 6, 2018, demanding removal of the Dubtown Video from YouTube.¹ (See Polidoro Decl. ¶ 27.) Google subsequently removed the Dubtown video from YouTube's platform. (See id. ¶ 28.)

On June 15, 2018, Watch Tower initiated this action by requesting the Court to issue a DMCA subpoena to YouTube to identify² who owns the Kevin McFree Account. (ECF No. 1.) On June 19, 2018, the Court granted the request and directed the Clerk of Court to issue the subpoena for YouTube (Google Inc.). (ECF No. 4.) On August 22, 2018, counsel appeared on behalf of Movant and requested leave to file a motion to quash the subpoena, (ECF Nos. 5 & 6), a request that Watch Tower opposed five days later (ECF No. 7). On August 27, 2020, the Court granted Movant leave to file his proposed motion. (ECF No. 11.) On November 10, 2020, the parties filed their respective briefing: Movant filed the instant motion (ECF No. 17) with its accompanying exhibits (ECF No. 18) and a memorandum in support ("Motion," ECF No. 19), as well as his reply ("Reply," ECF No. 24) with its accompanying exhibits (ECF Nos. 22 & 23); and Watch Tower its opposition ("Response in Opposition," ECF No. 19) with its accompanying exhibits (ECF No. 20).

STANDARD

Rule 45 provides that a court "must quash or modify a subpoena that ... requires disclosure of privileged or other protected matter, if no exception or waiver applies" or that "subjects a person to undue burden." Fed. R. Civ. P. 45(d)(3)(A)(iii)-(iv).

A movant seeking a protective order or to quash a subpoena bears the burden of persuasion. See Dove v. Atl. Capital Corp., 963 F.2d 15, 19 (2d Cir. 1992) ; Kingsway Fin. Servs., Inc. v. Pricewaterhouse-Coopers LLP , No. 03 Civ. 5560 (RMB) (HBP), 2008 WL 4452134, at *4 (S.D.N.Y. Oct. 2, 2008) ("[T]he party seeking to quash the subpoena bears the burden of demonstrating that the subpoena is over-broad, duplicative, or unduly burdensome."). "A determination to grant or deny a motion for a protective order or a motion to quash a subpoena is discretionary." John Wiley & Sons, Inc. v. Doe Nos. 1-30 , 284 F.R.D. 185, 189 (S.D.N.Y. 2012) (citing Galella v. Onassis, 487 F.2d 986, 997 (2d Cir. 1973) ; In re Subpoena Issued to Dennis Friedman, 350 F.3d 65, 68 (2d Cir. 2003) ).

"The Supreme Court has recognized that the First Amendment provides protection for anonymous speech." Arista Recs., LLC v. Doe 3 , 604 F.3d 110, 118 (2d Cir. 2010) (collecting cases). "The Court has also recognized that the Internet is a valuable forum for the exchange of ideas." Id. "To the extent that anonymity is protected by the First Amendment, a court should quash or modify a subpoena designed to breach anonymity." Id. (citing Fed. R. Civ. P. 45(c)(3)(A) (the "issuing court must quash or modify a subpoena" when it "requires disclosure of privileged or other protected matter, if no exception or waiver applies")). "The First Amendment does not, however, provide a license for copyright infringement." Id. "Thus, to the extent that anonymity is used to mask copyright infringement or to facilitate such infringement by other persons, it is unprotected by the First Amendment." Id.

Courts consider the following factors when determining whether to grant a motion to quash based on a qualified privilege protecting anonymity:

(1) the concreteness of the plaintiff's showing of a prima facie claim of actionable harm, (2) the specificity of the discovery request, (3) the absence of alternative means to obtain the subpoenaed information, (4) the need for the subpoenaed information to advance the claim, and (5) the objecting party's expectation of privacy.

Arista , 604 F.3d at 119 (cleaned up). Ultimately, decisions about the reasonableness and burden of a subpoena are left to the sound discretion of the court. See Malibu Media, LLC v. Doe , No. 14-CV-4808 (JS) (SIL), 2016 WL 4574677, at *2 (E.D.N.Y. Sept. 1, 2016).

DISCUSSION

By his motion, Movant argues that the Court should quash the subpoena because (1) Watch Tower cannot state a valid claim of copyright infringement, particularly because the Dubtown Video makes fair use of Watch Tower's works; and (2) in the absence of fair use, Watch Tower has misrepresented the true purpose of the subpoena—namely, to identify Movant to "disfellowship him as an apostate." (Mot. at 13–23.) Alternatively, if the Court does not quash the subpoena, Movant requests the Court permission to appear anonymously in future proceedings for fear of being ostracized, shunned, or disfellowshipped by the denomination's community for voicing criticisms or doubts about the organization.³ (Id. at 23–26.)

In opposition, Watch Tower contends that the Court must deny Movant's motion based on either of two independent grounds: (i) the motion's untimeliness; and (ii) the Arista factors support sustaining the subpoena. (Resp. in Opp'n at 14–28.) Watch Tower further contends that the Court should deny Mova...