IP Law Daily, COPYRIGHT—D.N.J.: First Blood: Studio behind latest episode in Rambo franchise wins early skirmish against RCN, (Oct 12, 2022)

By Matthew Hersh, J.D.

The studio joins roughly a dozen other copyright owners in a lawsuit targeting the BitTorrent network.

A small collection of independent movies studios, including the outfit behind the fifth and latest movie in the venerable Rambo series, adequately stated copyright infringement and DMCA claims in their lawsuit against a major internet provider for its facilitation of movie piracy over the BitTorrent network, the federal court in New Jersey has held. The court’s decision, rejecting in an unpublished opinion the ISP’s bid to dismiss the case at the outset, decided for the studios on a wide range of issues including the threshold needed to identify directly infringing users, the nature of the profit required for vicarious liability, and the availability of secondary liability under the DMCA (Bodyguard Productions, Inc. v. RCN Telecom Services of Massachusetts, LLC, October 11, 2022, Castner, G.).

The lawsuit arose when roughly a dozen copyright owners, including the studios behind Rambo: Last Blood and the star-studded (albeit poorly received) The Hitman’s Wife’s Bodyguard sued RCN Telecom Services for copyright infringement as well as violations of the Digital Millennium Copyright Act, or DMCA. The lawsuit revolved around the infamous BitTorrent network, a peer-to-peer file sharing protocol that has long been the bane of movie studios and other copyright owners. The lawsuit contended that RCN failed to take adequate steps to prevent its users from accessing the network, thus exposing it to secondary liability under the Copyright Act and the DMCA.

RCN moved to dismiss the lawsuit, leading to this opinion.

Direct infringement by users. The court first held that the studios had adequately alleged that RCN’s users directly infringed by using the BitTorrent network, an essential predicate for holding the ISP secondarily liable. The ISP argued that the studios had only identified the BitTorrent users by their IP address and not by name—not enough to assure that the correct person was targeted. Had the individual users been named as defendants in this lawsuit, the court noted, that argument would have merit. But here, the court reasoned, the studios targeted only the ISP, not the individual users. The studios had shown that individual users of the ISP infringed, the court noted, and that was enough.

Secondary liability. The court also found that the studios had adequately alleged that the ISP was secondarily liable for its users’ infringement. The court began with contributory liability, a doctrine that requires, absent an element of inducement, that the alleged secondary infringer contribute to specific acts of infringement at a time when it knows those acts of infringement are happening. The ISP was aware of infringement by users, the court reasoned, because the studios sent over 5,000 notices to the ISP identifying specific acts of infringement by specific users. And the ISP contributed to the infringement, the court found, by turning a blind eye to those users and continuing to provide them access to the internet. That was easily enough, the court held, to allege contributory infringement.

The court’s analysis of vicarious liability required more elaboration, but came to the same conclusion. To plead vicarious liability, the studios needed to allege that the ISP had a right and ability to supervise its users and that it directly profited from the users’ infringement. The first prong was easily met, the court found, as the ISP’s terms of service gave it the ability to block users. The second prong was slightly more complicated, however. It was not enough to plead that the ISP profited generally from users who infringed, the court emphasized—instead, the studios would have to plead that the ability to use its services to infringe was one of the specific draws for the ISP’s users. Did the studios meet this threshold? The court found that they did. After all, the court found, the studios alleged that the ISP advertised their highest-speed service—which is available at a higher cost—to users who wished to “download an HD movie in a Snap.” That was enough, the court found, to survive a motion to dismiss.

DMCA claims. The court also refused to dismiss the studios’ claims under the DMCA. This analysis required two steps. First, the court had to decide whether there was even a doctrine for secondary liability under the DMCA. After all, the studios had alleged only DMCA violations by the ISP’s users, not the ISP itself—and the DMCA statute itself was silent as to secondary liability. But this did not matter, the court concluded. Secondary liability is a common remedy for torts, the court reasoned, and the legislative history behind the DMCA made clear that this traditional remedy should remain available under that statute.

The court also found that the studios adequately alleged that individual users of the ISP violated the DMCA. After all, the studios alleged, uploaders to the service typically altered the names of movie files in order to attract more downloaders, thus knowingly facilitating infringement on the service. That was more than enough to survive the motion to dismiss, the court found.

Injunctive relief. Finally, the court one gave victory—albeit a modest one—to the ISP. The studios brought a separate claim in their complaint for injunctive relief. But injunctive relief is a remedy and not a cause of action, the court reasoned. Thus, the count would be struck.

The case is No. 3:21-cv-15310-GC-TJB.

Attorneys: Michael Cukor (McGeary Cukor) for Bodyguard Productions, Inc. Edward Frederick Behm (Armstrong Teasdale, LLP) for RCN Telecom Services of Massachusetts, LLC.

Companies: Bodyguard Productions, Inc.; RCN Telecom Services of Massachusetts, LLC

Cases: Copyright TechnologyInternet NewJerseyNews GCNNews