Courts across the United States have now made clear that discovery of social media is fair game. At the same time, courts have consistently found that litigants will not be permitted to engage in social media fishing expeditions; rather, litigants will be required to show that the sites likely contain relevant material. We explore below various approaches taken by courts to address social media-related discovery challenges.

Some courts have simply quashed a litigant’s request for social media-related discovery for failure to show relevance to the dispute. In Kennedy v. Contract Pharmacal Corp., the plaintiff sought a variety of gender discrimination-based damages. The defendants sought to compel broad discovery from the plaintiff’s social media sites. For instance, the defendants broadly requested “[a]ll documents concerning, relating to, reflecting and/or regarding Plaintiff’s utilization of social networking sites.” Denying a motion to compel discovery, the U.S. District Court for the Eastern District of New York held that “[t]here is no specificity to the requests and no effort to limit these requests to any relevant acts alleged in this action.” Continue Reading U.S. Courts’ Evolving Approaches to Social Media E-Discovery

The Seventh Circuit held recently in Brownmark Films, LLC v. Comedy Partners that, under certain circumstances, a trial court may dismiss a copyright infringement case based on a fair use defense prior to discovery.

Over the years, the satiric Comedy Central cartoon program South Park and its creators have developed a reputation for biting social commentary. Past targets include World of Warcraft players, Occupy Wall Street, and the History Channel’s recent obsession with swamp creatures and World War II. In the show’s 12th season, in an episode entitled “Canada on Strike,” South Park took on the world of viral videos. The episode included a parody of a real-world viral video called “What What (In the Butt)” (“WWITB”) (Authors’ Note: possibly NSFW).  South Park’s version visually approximates the original, but plays on the naïveté of the starring nine-year-old South Park character, Butters, by using more childish elements; for example, by portraying Butters dressed up as a teddy bear and a daisy.

Brownmark, the copyright holder for the original WWITB video, filed suit for copyright infringement against South Park Digital Studios and others (“South Park Studios”). South Park Studios responded with a motion to dismiss based on an affirmative fair use defense.  Although Circuit Judge Cudahy noted that courts should generally refrain from dismissing cases based on affirmative defenses, he wrote that the reason for this reticence is that defenses typically turn on facts that emerge during discovery and trial.  In this case, though, the district court ruled that only two pieces of evidence were needed to decide the question of fair use: the original WWITB video and South Park Studios’ parody.

The district court granted South Park Studios’ motion and dismissed the case. The Seventh Circuit affirmed, noting that “[o]ne only needs to take a fleeting glance at the South Park episode” to determine that its use of the WWITB video is meant “to lampoon the recent craze in our society of watching video clips on the internet . . . of rather low artistic sophistication and quality.” Thus, fair use.

Other commentators support the decision, noting that the focus of the parody is not the specific viral video, but rather that the parody is a commentary on society’s consumption of such Internet videos generally. It is worth noting that such arguments have not always found favor in the courts. For example, in the well-known Cat Not in the Hat! case, a district court found—and the Ninth Circuit affirmed—that a book entitled The Cat Not in the Hat! A Parody by Dr. Juice was not shielded as fair use. The book “mimic[ked] the distinctive style” of a Dr. Seuss book, using repetitive, simple rhymes to tell the story of the O.J. Simpson double-murder trial. The general idea is that a use is not fair if, in the words of the U.S. Supreme Court in Campbell v. Acuff-Rose, the alleged infringer uses the original work solely “to get attention or to avoid the drudgery in working up something fresh.” In Brownmark, it seems, the Seventh Circuit viewed South Park’s parody as something more than mere drudgery avoidance.

Going forward, Brownmark changes little, if anything, with respect to the substance of the fair use analysis. But Brownmark does show that courts may—in at least some fair use cases and at least in the Seventh Circuit—grant a motion to dismiss prior to discovery. While Brownmark involved a seemingly easy fair use case in the defendants’ favor, it will be interesting to see whether future courts will grant motions to dismiss where the fair use analysis is less obvious. In any event, copyright infringement plaintiffs should be aware that the road to discovery where a defendant raises a fair use defense may not be quite as smooth as it used to be.

Plenty of press attention has been given to social media sites’ views on whether their users can use “handles” or pseudonyms instead of their real names.  But much of the Internet’s social conversation remains dependent upon that dot-com staple, the anonymous message board.  In the recent case of Varrenti v. Gannett Co., Inc., a New York trial court had an opportunity to opine on the standard for compelling an online service provider (OSP) to disclose the identities of anonymous Internet posters in view of competing First Amendment considerations.  However, the court punted on that issue, instead basing its decision on the far narrower question of whether plaintiffs stated a prima facie cause of action against the anonymous defendants — and leaving the standard for discovery of anonymous Internet users’ real identities unsettled in New York, just as it is nationwide.

A variety of tests for compelling the disclosure of the identity of an anonymous Internet user have emerged over the past decade.  One approach is the five-factor balancing test established by a New York federal court in Sony Music Entertainment Inc. v. Does 1-40.  Under the Sony Music test, a court is required to weigh the following five factors in order to assess the need to disclose an anonymous Internet user’s identity:

  • Is there a concrete showing of a prima facie claim of actionable harm?
  • Is the discovery request sufficiently specific to lead to identifying information?
  • Is there an absence of alternative means to obtain the subpoenaed information?
  • Is there a central need for the subpoenaed information to advance the claim?
  • Does the anonymous Internet user have a reasonable expectation of privacy?

An OSP’s terms of service agreement can play into the fifth prong of the Sony Music test.  In Sony Music, for example, the OSP’s terms of service specifically reserved the right to disclose any information necessary to satisfy any law.  Because the same terms also expressly prohibited users from transmitting material in violation of copyright law, the court found that the anonymous defendants had little expectation of privacy when using the service to download and distribute over peer-to-peer networks, sound recordings owned by third parties without permission of the copyright holders. Such a limited expectation of privacy, in conjunction with the plaintiff’s strong prima facie claim of copyright infringement and the plaintiff’s demonstrated need for the identifying information to advance its claim, outweighed any limited First Amendment protections that the service users might otherwise have.

Another test for whether the disclosure of an anonymous Internet user’s identity can be compelled, is the four-factor test invoked by the Appellate Division of the New Jersey Superior Court in Dendrite International, Inc. v. Doe No. 3.  In the lower court, Dendrite had sought to discover the identity of an anonymous poster on a Yahoo! Internet message board devoted to a discussion of Dendrite’s stock performance.  Dendrite alleged that the poster defamed the company and misappropriated trade secrets by making false statements about Dendrite having changed its revenue recognition policy, Dendrite’s contracts being structured to defer income and Dendrite’s lack of competitiveness, as well as by alleging that Dendrite’s president was secretly and unsuccessfully “shopping” the company.  The lower court judge found that the plaintiff was not entitled to discovery of the anonymous poster’s identity because it had failed to show harm caused by the anonymous postings — a required element for stating a prima facie case of defamation.

On review, the Appellate Division adopted, with modifications, a four-factor test that had been applied by the federal district court in the Northern District of California in Columbia Insurance Company v.  Under this test, a trial court is permitted to order the disclosure of an anonymous Internet user’s identity if:

  • The plaintiff makes efforts to notify the user that he or she is the subject of a subpoena, and affords the user a reasonable opportunity to file and serve opposition;
  • The plaintiff identifies and sets forth the exact statements purportedly made by the anonymous user that allegedly constitute actionable speech;
  • The plaintiff has asserted a prima facie cause of action against the defendant and produced sufficient evidence to support each element of the action; and
  • The strength of the prima facie case presented, and the need for the disclosure of the defendant’s identity, outweigh his or her First Amendment right of anonymous free speech.

The fourth prong of this Dendrite test is intended to be a “flexible, non-technical, fact-sensitive mechanism” that gives courts ample discretion to evaluate whether disclosure of the anonymous user’s identity is necessary.  Therefore, even though the lower court judge in Dendrite may have taken a stricter approach than normal to the “harm” element of the test (particularly when applying motion-to-dismiss standards), the Appellate Division determined that the judge’s analysis of the claim was still consistent with that element of the test — and after determining that the record supported the lower court’s finding that there was no nexus between the anonymous postings and fluctuations in Dendrite’s stock prices, it affirmed the finding and refused to permit discovery of the anonymous poster’s identity.

At least one court has found that the nature of the speech involved should be the driving force in selecting the test for discovering the identity of an anonymous Internet user.  The Ninth Circuit has held that a stricter test for unmasking “John Doe” Internet publishers is appropriate when the speech at issue is non-commercial.

Under this test, originally established by the Delaware Supreme Court in Doe v. Cahill, a plaintiff may discover an anonymous speaker’s identity by both giving or attempting to give notice to the speaker, and presenting a prima facie case that can survive a hypothetical motion for summary judgment.  As reported in our August 2010 issue, the trial court in Quixtar, Inc. v. Signature Management TEAM, LLC, used this test to order the disclosure of the identities of anonymous speakers who had made allegedly false and disparaging statements about the plaintiff company on third-party blogs and in online videos.  On appeal, the Ninth Circuit found that the district court’s application of the Cahill test was not appropriate because the speech involved related to a non-compete provision in a contract, which was not express political speech entitled to greater protection.  However, because the trial court’s decision to apply the Cahill test did not constitute clear error, the Ninth Circuit nonetheless refused to vacate the trial court’s order.  It is unclear whether courts in other jurisdictions have adopted the approach of choosing a test based on whether the speech at issue is commercial or non-commercial. 

The recent Varrenti decision reminds us that the assertion of a prima facie cause of action remains a key factor in determining whether the identities of anonymous Internet users are discoverable, no matter which test reigns.  In Varrenti, members of the Village of Brockport Police Department brought a defamation action against the Democrat & Chronicle, a local newspaper publisher in Rochester, New York, and four Internet users who posted anonymous comments on the newspaper’s website about the plaintiffs’ competence, integrity and actions.  The plaintiffs argued that the Sony Music test should apply, while the defendant argued that the Dendrite test should apply.  The New York Supreme Court elected not to address the issue of which test applied, instead focusing on the common factor from both tests — that is, whether the plaintiffs had stated a prima facie cause of action for defamation.  Because the tone and objective of the anonymous statements were critical of the plaintiffs and the comments were published in a web forum that invited newsreaders to share opinions, the court found as a threshold matter that the comments were protected expression that could not form the basis of a defamation claim, and that, therefore, no prima facie case had been stated.

In basing its decision solely on the context in which the comments were made, the Varrenti court avoided addressing other test factors, bringing no further clarity on which standard for discovering the identity of anonymous Internet users should apply.  Until the various standards for discovery of anonymous Internet users’ identity converge, then, the question of whether an OSP can be compelled to disclose an Internet user’s identity rests largely on the plaintiff’s ability to state a prima facie claim of actionable harm — worth keeping in mind for companies pursuing a claim against a user of a message board or other social media service.