IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

COBBLER NEVADA, LLC,

Plaintiff,

v.

THOMAS GONZALES,

Defendant.

Case No. 3:15-cv-00866-SB

FINDINGS AND

RECOMMENDATION

BECKERMAN, Magistrate Judge.

This is an action for violation of the Copyright Act, 17 U.S.C. §§ 101 et seq., based on the

alleged unlawful downloading and distribution of Plaintiff’s copyrighted motion picture, The

Cobbler, using peer-to-peer file sharing software referred to as BitTorrent. Plaintiff asserts two

claims against Thomas Gonzales (“Gonzales”), copyright infringement and indirect copyright

infringement.

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Pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, Gonzales moves to

dismiss Plaintiff’s claim for indirect infringement, for failure to state a claim upon which relief can

be granted. The Court heard oral argument on March 14, 2016. For the reasons set forth below, the

district judge should grant Gonzales’ motion to dismiss Plaintiff’s claim for indirect infringement.

In addition, this Court recommends that the district judge also dismiss Plaintiff’s claim for direct

infringement.

I. BACKGROUND 

On May 20, 2015, Plaintiff filed a Complaint against a Doe defendant identified only by an

Internet Protocol (“IP”) address. Plaintiff’s investigators observed the IP address distributing

Plaintiff’s motion picture via a public BitTorrent network. On the same day, Plaintiff filed a motion

seeking leave to expedite discovery and to issue a subpoena to Internet Service Provider (“ISP”)

Comcast, for information identifying the IP address subscriber.The Court granted Plaintiff’s motion,

and Plaintiff served a subpoena on Comcast.

Comcast returned a subpoena response identifying Thomas Gonzales as the subscriber.

Plaintiff made several attempts to contact Gonzales, who was unresponsive. On July 20, 2015,

Plaintiff filed a motion seeking leave to issue a Rule 45 subpoena to depose Gonzales. The Court

granted Plaintiff’s request for a Rule 45 subpoena, and Plaintiff attempted to serve Gonzales.

Following several failed attempts to serve Gonzales personally, the Court granted Plaintiff’s request

for alternate or mail service. On August 25, 2015, Plaintiff served Gonzales, by mail, with a

subpoena for his deposition. At oral argument, Plaintiff’s counsel confirmed that he had deposed

Gonzales.

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Plaintiff filed a First Amended Complaint on November 4, 2015, naming Gonzales as the

defendant. Plaintiff alleges that Gonzales is the subscriber originallyidentified as the Doe IP address,

and that Gonzales copied and distributed The Cobblerthrough a BitTorrent network, in violation of

Plaintiff’s exclusive rights under the Copyright Act. (First Am. Comp. ¶ 26.) Plaintiff alternatively

alleges that Gonzales facilitated and permitted the use of the Internet for the infringing of Plaintiff’s

exclusive rights under the Copyright Act, by failing to secure, police, and protect the use of his

Internet service. (First Am. Compl. ¶¶ 34-35.)

II. LEGAL STANDARD

A well-pleaded complaint requires only “a short and plain statement of the claim showing

that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). A federal claimant is not required to

detail all factual allegations; however, the complaint must provide “more than labels and

conclusions, and a formulaic recitation of the elements of a cause of action will not do.” Bell Atlantic

Corp. v. Twombly, 550 U.S. 544, 555 (2007). “Factual allegations must be enough to raise a right

to relief above a speculative level.” Id. While the court must assume all facts alleged in a complaint

are true and view them in a light most favorable to the nonmoving party, it need not accept as true

any legal conclusion set forth in the complaint. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). In

addition, a plaintiff must set forth a plausible claim for relief, a possible claim for relief will not do.

Id. (“Where a complaint pleads facts that are merely consistent with a defendant’s liability, it stops

short of the line between possibility and plausibility of entitlement to relief.” (quotations and citation

omitted)). “In sum, for a complaint to survive a motion to dismiss, the non-conclusory ‘factual

content,’ and reasonable inferences from that content, must be plausibly suggestive of a claim

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entitling the plaintiff to relief.” Moss v. U.S. Secret Service, 572 F.3d 962, 969 (9th Cir. 2009)

(quoting Iqbal, 556 U.S. at 678).

III. DISCUSSION

A. Indirect Infringement (Second Claim for Relief)

1

Plaintiff alleges Gonzales is liable for contributory infringement because he “knowingly or

with willful disregard . . . facilitated and promoted the use of the Internet for the infringing of

[P]laintiff’s exclusive rights under the Copyright Act by others.” (First Am. Compl. ¶ 34.)

Specifically, Plaintiff alleges that Gonzales “failed to reasonably secure, police and protect the use

of [his] Internet service and or computers against use for improper purposes such as piracy, including

the downloading and sharing of the motion picture by others.” (First Am. Compl. ¶ 35.)

Gonzales moves to dismiss Plaintiff’s contributory infringement claim, “on the ground that

there is no authority under existing law . . . that would support the imposition of liability for the

conduct alleged.” (Def.’s Mot. Dismiss 2.) Specifically, Gonzales argues that neither the Copyright

Act nor existing case law creates secondary infringement liability for a private Internet subscriber

who fails to prevent infringement by others using the private subscriber’s Internet service. (Def.’s

Reply 5-7.)

Although “[t]he Copyright Act does not expressly render anyone liable for [another’s]

infringement,” Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 434 (1984), the

Supreme Court has recognized two types of secondary copyright infringement: contributory

infringement and vicarious infringement. The landmark Supreme Court case most relevant to

1

 In its Response to Gonzales’ Motion to Dismiss, Plaintiff clarifies that its “indirect

infringement” claim is premised on a theory of contributory infringement. (Pl.’s Resp. 1.)

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Plaintiff’s theory of liability here, is Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S.

913, 930 (2005).

In Grokster,several entertainment companies alleged that users of Grokster and Streamcast,

peer-to-peer file-sharing services, were directly infringing copyrights by “sharing” copyrighted

materials over the peer-to-peer network, and that Grokster and Streamcast were contributorily

infringing because theyknowinglyinduced the infringement. The Supreme Court held that “one who

distributes a device with the object of promoting its use to infringe copyright, as shown by clear

expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of

infringement by third parties.” Id. at 919. The Supreme Court concluded that Grokster and

Streamcast “acted with a purpose to cause copyright violations by use of software suitable for illegal

use,” citing evidence that Grokster and Streamcast targeted former Napster users, failed to develop

filtering tools to diminish infringing activity, and profited from the infringing activity. Id. at 938-40. 

Importantly, the Supreme Court was clear that “just as Sony did not find intentional inducement

despite the knowledge of the VCR manufacturer that its device could be used to infringe, mere

knowledge of infringing potential or of actual infringing uses would not be enough here to subject

a distributor to liability.” Id. at 937 (citing Sony, 464 U.S. at 439 n.19).

Plaintiff’s theory of contributory liability here is that Gonzales was notified about infringing

activity on his Internet connection, but did nothing to stop it. Plaintiff’s theory of contributory

liability is contrary to the Supreme Court’s holding in Grokster. The Supreme Court was clear in

Grokster that contributory infringement liability does not arise “merely based on a failure to take

affirmative steps to prevent infringement, if the device otherwise was capable of substantial

noninfringing uses.” Id. at 939 n.12 (emphasis added). Rather, secondaryinfringement liability arises

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only by “actively encouraging . . . infringement through specific acts. . . .” Id. at 942; see also Ellison

v. Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004) (holding that the elements required for

contributory copyright infringement liability are: (1) direct infringement by a primary infringer, (2)

knowledge of the infringement, and (3) material contribution to the infringement).2

Plaintiff has not alleged that Gonzales promoted, encouraged, enticed, persuaded, or induced

another to infringe any copyright, let alone Plaintiff’s copyright. On the contrary, Plaintiff has

alleged only that Gonzales “failed to reasonably secure, police and protect the use of [his] Internet

service.” (First Am. Compl. ¶ 35). Plaintiff’s theory of contributory infringement is foreclosed by

the Supreme Court’s opinions in Grokster and Sony. Indeed, it appears that every other court

presented with Plaintiff’s novel theory of indirect infringement liability has rejected it. See, e.g., ElfMan, LLC v. Brown, 996 F. Supp. 2d 1056, 1059 (E.D. Wash. Jan. 22, 2014) (granting motion to

dismiss claim that defendants were liable for indirect infringement “‘for failing to secure, police and

protect the use of their internet service against illegal conduct,’” and holding that “Grokster

effectivelyforecloses any argument that private consumers have an affirmative obligation to prevent

others from using their internet access for illegal copyright infringement”); Elf-Man, LLC v.

Cariveau, No. C13-0507RSL, 2014 WL202096, at *3 (W.D. Wash. Jan. 17, 2014) (granting motion

to dismiss claim that defendants were liable for indirect infringement for “‘fail[ing] to secure, police

2

 Plaintiff has also failed to plead adequately that Gonzales had knowledge of the

infringing activity. Plaintiff alleges only that notices were sent to Gonzales regarding infringing

activity, not that Gonzales received any such notices, nor that he received any notices prior to the

infringing activity relating to Plaintiff’s copyright. Importantly, Plaintiff has also failed to plead

that any such notices related to Plaintiff’s movie, The Cobbler. See Viacom Int’l. v. YouTube,

Inc., 676 F.3d 19, 35 (2d Cir. 2012) (holding that “general awareness that infringement may be

occurring” is usually irrelevant to the specific question of whether a particular defendant violated

a particular copyright held by a particular plaintiff), cited with approval in UMG Recordings, Inc.

v. Shelter Capital Partners LLC, 718 F.3d 1006, 1023 (9th Cir. 2013).

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and protect the use of their internet service against illegal conduct,’” citing Grokster and Sony);

Thompsons Film, LLC v. Does 1-194, No. C13-0560RSL, 2014 WL 585862, at *3 (W.D. Wash.

2014) (same).

In light of Supreme Court precedent to the contrary, this Court declines to extend

contributory infringement liability to an individual who has not actively encouraged nor materially

contributed to any infringing activity. The district judge should dismiss Plaintiff’s second cause of

action for indirect infringement, with prejudice.

B. Direct Infringement (First Claim for Relief)

This Court also concludes that Plaintiff’s claim for direct infringement should be dismissed

pursuant to Rule 12(b)(6), for failure to state a claim.

In its First Amended Complaint, Plaintiff alleges that Gonzales’ IP address “has been

observed and confirmed as” infringing The Cobbler multiple times. (First Am. Compl. ¶ 13.) The

only facts Plaintiff pleads in support of its allegation that Gonzales is the infringer, is that he is the

subscriber of the IP address used to download or distribute the movie, and that he was sent notices

of infringing activity to which he did not respond. That is not enough. Plaintiff has not alleged any

specific facts tying Gonzales to the infringing conduct. While it is possible that the subscriber is also

the person who downloaded the movie, it is also possible that a family member, a resident of the

household, or an unknown person engaged in the infringing conduct.3See, e.g., Elf–Man, 2014 WL

202096, at *2 (“While it is possible that the subscriber is the one who participated in the BitTorrent

swarm, it is also possible that a family member, guest, or freeloader engaged in the infringing

3

 The First Amended Complaint does not allege that Gonzales’ Internet connection is

secured. 

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conduct.”); Malibu Media, LLC v.. Tsanko, No. 12-3899(MAS) (LHG), 2013 WL 6230482, at *10

(D.N.J. Nov. 30, 2013) (“The Court questions whether these allegations are sufficient to allege

copyright infringement stemming from the use of peer-to-peer file sharing systems where the

Defendant-corporation is connected to the infringement solely based on its IP address. It may be

possible that Defendant is the alleged infringer that subscribed to this IP address, but plausibility is

still the touchstone of Iqbal and Twombly.”); AF Holdings LLC v. Rogers, No. 12cv1519 BTM

(BLM), 2013 WL 358292, at *2 (S.D. Cal. Jan. 29, 2013) (“Because the subscriber of an IP address

may very well be innocent of infringing activity associated with the IP address, courts take care to

distinguish between subscribers and infringers.”); see also In re BitTorrent Adult Film Copyright

Infringement Claims, 296 F.R.D. 80, 85 (E.D.N.Y. 2012) (“[I]t is no more likely that the subscriber

to an IP address carried out a particular computer function-here the purported illegal downloading

of a single pornographic film-than to say that an individual who pays the telephone bill made a

specific telephone call.”).4

Plaintiff acknowledged early in this litigation that it could not identify the infringer merely

by identifying the subscriber. In its Motion for Leave to Issue FRCP 45 Subpoena to Non-Party (ECF

No. 8), Plaintiff sought leave to conduct a non-party deposition of subscriber Gonzales, in order to

attempt to identify the actual infringer:

In this case ISP Comcast has identified a singular subscriber that was assigned the

IP address used by the Doe. . . . Independent investigations of the identified [sic] the

subscriber’s residence is a stand-alone structure. But such research and efforts do not

permit plaintiff to identify a specific party that is likely to be the infringer. As such,

plaintiff is left with the options of proceeding against the subscriber as named by

4

 Plaintiff’s counsel acknowledged at oral argument that the IP address linked to the

infringing conduct serves an adult foster care home operated by Gonzales. Any resident or guest

of that home could be the infringer. 

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Comcast and possibly substituting another party on discovery, or seeking further

discovery to ascertain the identity of the true Doe defendant prior to naming a party.

While the named subscriber is often the proper defendant, plaintiff wishes to ensure

that investigations are complete and proper and submits that in this matter something

beyond the mere identification of a subscriber by an ISP is proper before a defendant

is named.

(Pl’s FRCP 45 at 2) (emphasis added). Although the Court granted Plaintiff’s request to depose

Gonzales, the deposition apparentlydid not reveal anyadditional information regarding the infringer

in this case. Nevertheless, Plaintiff amended its complaint to name Gonzales as the defendant.

Based on the facts alleged in the First Amended Complaint, Gonzales is but one of many

possible infringers, and Plaintiff’s allegation that Gonzales is the infringer is just a guess. See Iqbal,

556 U.S. at 678 (to avoid dismissal, “a complaint must contain sufficient factual matter, accepted

as true, to state a claim to relief that is plausible on its face” (citation and internal quotation marks

omitted)); see also Petzschke v. Century Aluminum Co., 729 F.3d 1104, 1108 (9th Cir. 2013)

(explaining that “[w]hen faced with two possible explanations, only one of which can be true and

only one of which results in liability,” a plaintiff must allege more, “such as facts tending to exclude

the possibility that the alternative explanation is true,” in order to render the allegations plausible). 

Twombly and Iqbal do not allow Plaintiff to guess at who is liable, and attempt to confirm

liability through discovery. “Plausible” does not mean certain, butit doesmean “likely,” and Plaintiff

has not pled sufficient facts to support its allegation that Gonzales is the likely infringer here.

Accordingly, the district judge should dismiss Plaintiff’s claim for copyrightinfringement. See Omar

v. Sea–Land Serv., Inc., 813 F.2d 986, 991 (9th Cir. 1987) (“A trial court may dismiss a claim sua

sponte under Fed. R. Civ. P. 12(b)(6).”).

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IV. CONCLUSION

For the reasons set forth above, the district judge should GRANT Defendant’s Motion to

Dismiss (ECF No. 27), and DISMISS Plaintiff’s second claim for relief, with prejudice. In addition,

the district judge should also DISMISS Plaintiff’s first claim for relief, without prejudice.

V. SCHEDULING ORDER

The Findings and Recommendation will be referred to a district judge. Objections, if any, are

due fourteen (14) days from service of the Findings and Recommendation. If no objections are filed,

then the Findings and Recommendation will go under advisement on that date. If objections are filed,

then a response is due fourteen (14) days after being served with a copy of the objections. When the 

response is due or filed, whichever date is earlier, the Findings and Recommendation will go under

advisement.

Dated this 18th day of March 2016.

 

STACIE F. BECKERMAN

United States Magistrate Judge

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