I Have this Favor to Ask of You: Don’t Betray the Family with Third-Party Discovery

You should never betray the family…and one such betrayal resulted in trademark litigation over Mafia Wars. 

Now You are Part of the Family

For those not familiar with Mafia Wars (or you spend a lot of time clicking “Ignore”), it is a game on social networking sites such as Facebook.  Players earn “virtual currency” for “Virtual Goods” on the game by doing “jobs.”  Zynga Game Network, Inc. v. Williams, 2010 U.S. Dist. LEXIS 57746, 1-3 (N.D. Cal. May 20, 2010).

The Plaintiffs brought an action (or job) against the Defendants for the unauthorized sale of “Virtual Goods” with three infringing domain names and related services.  The allegedly infringing websites allowed players to compete against other Mafia Wars users who obtained their own Virtual Goods from the Plaintiff.  Due to this infringement, lawyers were brought in to whack the Defendants. 

What is the Interest for My Family?

The Plaintiff needed to identify who exactly were the infringing Defendants that crossed the family.  Instead of solving the problem the Chicago Way, they sought third-party discovery from GoDaddy.com, Inc., Microsoft Office Live, and Paypal.  In short, they were following the money. 

The third-parties were each sent a virtual horse head in the form of a Federal Rule of Civil Procedure Rule 45 subpoena. 

The Plaintiff sought from GoDaddy and Microsoft “all billing and account records (including all Internet domain names), server logs, website content, contact information, transaction histories and correspondence for the persons or entities that have purchased services from [pertinent hosting site name] in connection with the Internet domain names…” Zynga Game Network, Inc., at *7-8. 

The request against PayPal sought “all billing and account records, server logs, contact information, transaction histories and correspondence for the persons or entities that have established accounts with PayPal, Inc.,…” related to specific email addresses used by the Defendants.  Zynga Game Network, Inc., at *8. 

Settling Family Business: Third-Party Requests

Once the moving papers were wrapped around a fish, the Court summarized the requirements for a Rule 45 request. 

Rule 45 enables a party to subpoena third-parties for electronically stored information (in addition to other discovery).  Zynga Game Network, Inc., at *4.  The scope of Rule 45 is same as Rule 34 requests on a party and limited by Rule 26.  Id.    

The following are the limiting factors under Federal Rule of Civil Procedure Rule 26(b)(2)(C)(i)-(iii):

(i) the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive;

(ii) the party seeking discovery has had ample opportunity to obtain the information by discovery in the action; or

(iii) the burden or expense of the proposed discovery outweighs its likely benefit, considering the needs of the case, the amount in controversy, the parties’ resources, the importance of the issues at stake in the action, and the importance of the discovery in resolving the issues.

Zynga Game Network, Inc., at *5.

The Ninth Circuit requires “good cause” if a party is seeking discovery prior to the Rule 26(f) meet and confer.  Zynga Game Network, Inc., at *5, citing In re Countrywide Fin. Corp. Derivative Litig., 542 F. Supp. 2d 1160, 1179 (C.D. Cal. 2008).  Good cause is often applied and found in infringement cases.  Zynga Game Network, Inc., at *6.

Your Sins are Terrible: The Test for Limited Discovery

The four-part test to conduct limited discovery to find the Defendants:

(1) Identifying the Defendants with enough specificity to allow the Court to determine whether the Defendants are a real person or entity who could be sued in federal court;

(2) Recounting the steps taken to locate the defendant;

(3) Showing that its action could survive a motion to dismiss; and

(4) Filing a request for discovery with the Court identifying the persons or entities on whom discovery process might be served.

Zynga Game Network, Inc., at *6-7, citing Columbia Insurance Co. v. Seescandy.com, 185 F.R.D. 573, 578-80 (N.D. Cal. 1999).

The Plaintiffs argued they met the four-part test, because of the following:

            1) The Defendants created and operated the infringing websites;

            2) The Plaintiffs tried identifying the Defendants with the Whois public database; examining other websites; reviewing source code from the websites; and trying to contact the Defendants at their listed addresses;

            3) The Plaintiff demonstrated the Defendants violated the Plaintiff’s trademarks;

            4) The limited discovery would allow the Plaintiff to identify the Defendants.

            Zynga Game Network, Inc., at *7.

Only Don’t Tell Me You’re Innocent…

The Court granted the Plaintiff’s limited discovery…in part. 

The Court stated that “limited” discovery required the Plaintiff narrow their requests to only what was needed to determine the Defendants’ true identities and locations.  Zynga Game Network, Inc., at *9.

The Court allowed the limited discovery as follows:

Subpoena on GoDaddy to produce “all documents necessary to obtain the name, current and permanent addresses, telephone numbers, and valid e-mail addresses of the owner(s)” of the infringing websites to identify and locate of the Defendants.

Subpoena on Microsoft to “produce all documents necessary to obtain the name, current and permanent addresses, telephone numbers, and valid e-mail addresses of the owner(s)” of the infringing websites to identify and locate of the Defendants.

Subpoena on PayPal to “produce all documents necessary to obtain the name, current and permanent addresses, telephone numbers, and valid e-mail addresses of the  person or entities that have established accounts with PayPal, Inc…”   

Zynga Game Network, Inc., at *10-11. 

Bow Tie Thoughts: It’s Not Like the Old Days…

In the age of social networking, free apps and instant downloads, trademark infringement can move at lightening speed.  Moreover, those infringing can hide behind a domain name and dummy email address with great ease.  Third-party requests to identify infringing parties will likely be a frequent application in Federal court.

2 thoughts on “I Have this Favor to Ask of You: Don’t Betray the Family with Third-Party Discovery

  1. Pingback: Tweets that mention I Have this Favor to Ask of You: Don’t Betray the Family with Third-Party Discovery « Bow Tie Law’s Blog -- Topsy.com

  2. Very interesting post. I like the angel that you took on this. Too often we are all guilty of something and you make it interesting. Nice choice of pictures too.

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