PowerPoint and the Attorney-Client Privilege

As Wikipedia notes, the attorney-client privilege is “protects certain communications between a client and his or her attorney and keeps those communications confidential.” The applicability of the attorney-client privilege was the issue in Phoenix Law Enforcement Ass’n v. City of Phoenix, 2012 WL 461812 (Arizona Court of Appeals 2012) [hereafter, “PLEA v. Phoenix”].

According to the appellate court’s opinion, this is how this civil case arose:

In September 2009, Public Safety Manager and [Phoenix Police Department (PPD)] Chief Jack Harris directed two PPD employees to prepare the PowerPoint for use at a meeting between representatives of the City Manager's Office and PPD. Present at the meeting were Chief Harris, PPD Executive Assistant Chief Joseph Yahner, PPD Commander Robert Handy, City Manager Frank Fairbanks, Assistant City Manager Alton Washington, City Attorney Gary Verberg and PPD Legal Advisor Lieutenant Eric Edwards.

At the meeting, the PowerPoint was presented and discussed. According to the City, [it] was presented `for the purpose of obtaining legal advice and considering management options based upon that advice.’ Following the meeting, the City contends, Verberg and Edwards `continued to provide legal advice to Chief Harris and [ ] Assistant Chief Yahner’ based on the information from the PowerPoint.

In October 2009, Washington contacted PLEA representative Will Buividas and told Buividas about the meeting and also described the content of the PowerPoint in detail. [Phoenix Law Enforcement Association (PLEA)] contends Washington never indicated to Buividas that the PowerPoint was confidential or made for the purpose of seeking legal advice.

PLEA v. Phoenix, supra.

PLEA then submitted requests for access to the PowerPoint pursuant to Arizona’s Public Records Law, but PPD denied the requests, “claiming the PowerPoint was protected by the attorney-client privilege and not subject to public records disclosure.” PLEA v. Phoenix, supra. On January 22, 2010, PLEA filed a complaint in the Maricopa County Superior Court in which it argued that the PowerPoint “is a public record” and asked the court to “compel the City to disclose it.” PLEA v. Phoenix, supra.

The City filed a motion to dismiss PLEA’s complaint, arguing that the PowerPoint was protected by the attorney-client privilege and was therefore not subject to disclosure under the state public records law. PLEA v. Phoenix, supra. On September 8, 2010, the Superior Court judge granted the City's motion to dismiss and PLEA appealed. PLEA v. Phoenix, supra.

The Court of Appeals began its analysis of the issues in the case by noting that Arizona Revised Statutes § 39-121 states that “[p]ublic records and other matters in the custody of any officer shall be open to inspection by any person”. The court also explained that in determining whether § 39-121 applies in a given instance, Arizona courts use a “two-step process”: They first determine “whether the document is a public record.” PLEA v. Phoenix, supra. If they find it is a public record, courts then “perform a balancing test to determine whether privacy, confidentiality, or the best interests of the state outweigh the policy in favor of disclosure.” PLEA v. Phoenix, supra.

The court began its analysis of the first issue by explaining that while “Arizona statutes do not define” the term “public record”, the Arizona Supreme Court provided a definition of the term in Griffis v. Pinal County, 215 Ariz. 1, 156 P.3d 418 (2007). PLEA v. Phoenix, supra. The Griffis court defined a “public record” as

[1] one `made by a public officer in pursuance of a duty, the immediate purpose of which is to disseminate information to the public, or serve as a memorial of official transactions for public reference’;

[2] a record that is `required to be kept, or necessary to be kept in the discharge of a duty imposed by law or directed by law to serve as a memorial and evidence of something written, said or done’; or

[3] any `written record of transactions of a public officer in his office, which is a convenient and appropriate method of discharging his duties, and is kept by him as such, whether required by . . . law or not.’

PLEA v. Phoenix, supra.

The Maricopa Superior Court judge held that the PowerPoint at issue in this case did not

satisfy the first or second definitions because `its content was not intended for the public’ and PLEA failed to direct the court to `any legal requirement that a record of the meeting, or documents discussed at it, be kept.’ The court noted that `the third definition might be satisfied’ because PPD officials might have created the PowerPoint as a ‘”convenient and appropriate method of discharging” their duty to present the information to their superiors.’

But the court found that because PLEA did not allege `that retention of the PowerPoint itself implicates the discharge of [PPD officials'] duties,’ PLEA could not rely on that definition. Accordingly, the court concluded that it was `not persuaded that the PowerPoint is a public document at all.’

PLEA v. Phoenix, supra.

The Court of Appeals found that while the “the Griffis . . . definition provides a useful starting place for evaluating whether a document is a public record, the superior court erred by construing the definition of a public record too narrowly”. PLEA v. Phoenix, supra. It explained that in this case it was “uncontested” that the PowerPoint was

(1) created by PPD employees, (2) to be presented to City officials, (3) for the governmental purpose of “considering management options” based on legal advice. Accordingly, the PowerPoint was clearly a reasonably necessary or appropriate means of maintaining an accurate knowledge of PPD's official activities within the meaning of § 39–121. . . .

Furthermore, the PowerPoint also falls under § 39–121. . . because it was created by PPD employees and presented to City officials, thus constituting a record of PPD's `activities which are supported by monies from the state.’ Therefore, we find the PowerPoint bears `a “substantial nexus” to government activities’ and comes within the threshold definition of a `public record.’

PLEA v. Phoenix, supra.

The City of Phoenix argued that the PowerPoint did not meet the definition of a public record under Arizona law because it was not a “record of any activity, official or otherwise,” PLEA v. Phoenix, supra. The City argued that the state public records law should “not be construed as allowing public access to `the thought processes, mental impressions or internal considerations’” of government officials that did not result in “government action.” PLEA v. Phoenix, supra. The Court of Appeals rejected the City’s argument because the City did not cite “any authority for its proposition that a document must result in some form of official government action to be considered a public record.” PLEA v. Phoenix, supra.

It therefore took up the second part of the analysis, i.e., “whether privacy, confidentiality, or the best interests of the City . . . outweigh the Arizona policy in favor of disclosing public records.” PLEA v. Phoenix, supra. The City claimed the PowerPoint should not be disclosed because it was “protected by the attorney-client privilege.” PLEA v. Phoenix, supra. The City argued that it was protected by the privilege “because it was created and presented `for the purpose of obtaining legal advice and considering management options based upon that advice.’” PLEA v. Phoenix, supra. PLEA disagreed:

Citing [Arizona Revised Statutes § 12-2234], PLEA argues the attorney-client privilege only protects an attorney from being examined as to his communications with his client, but does not shield the client from being questioned about the same communications.

PLEA contends that because subsection A of the statute states that `an attorney shall not . . . be examined as to any communication made by the client to him, or his advice given thereon in the course of professional employment,’ the privilege only prohibits the questioning of the attorney but allows questioning of the client.

PLEA v. Phoenix, supra.

The Court of Appeals rejected PLEA’s argument and held that under Arizona law,

the attorney-client privilege protects a client from being questioned about communications with his attorney. Although § 12–2234 expressly prohibits asking an attorney about communications with a client, it does not purport to limit the longtime common law privilege that protects a client from being questioned about his communications with his lawyer.

Indeed, the common law privilege is held by the client, not by the lawyer. Buell v. Superior Court, 96 Ariz. 62, 391 P.2d 919 (1964) (the attorney-client privilege `is a privilege of the client, and not of the attorney’). . . .

PLEA v. Phoenix, supra.

PLEA then argued that the PowerPoint was “merely a collection of facts, which individually are not subject to privilege protection and therefore should not be protected as an amalgamation.” PLEA v. Phoenix, supra. The Court of Appeals agreed that “the facts a client communicates to his lawyer are not protected from disclosure in civil litigation,” but explained that the attorney-client privilege allows the client to refuse to disclose what facts he discussed with his attorney.” PLEA v. Phoenix, supra.

In this case we deal with circumstances more similar to the latter situation than the former. In other words, we have no doubt that in a civil action, City representatives could not . . . decline to disclose facts simply because they were mentioned in the PowerPoint.

At issue here, however, is the City's obligation to allow inspection of the PowerPoint under the public records law, not [its] obligation to disclose facts in a civil litigation. If the PowerPoint is a privileged communication, it is not subject to inspection under the public records law even if it contains nothing more than facts.

PLEA v. Phoenix, supra. (In a footnote, the court said the fact that “the PowerPoint was an electronic document” did not change its analysis. PLEA v. Phoenix, supra.)

Finally, PLEA argued that even if the privilege applied to the PowerPoint, the City failed “to satisfy a material element of the privilege because it did not show the communication was `made in confidence’ and `treated as confidential.’” PLEA v. Phoenix, supra. The appellate court began its analysis of this argument by noting that the privilege “is preserved `if the communication was made in the context of the attorney-client relationship and was maintained in confidence.’” PLEA v. Phoenix, supra (quoting Alexander v. Superior Court, 141 Ariz. 157, 685 P.2d 1309 (Arizona Supreme Court 1984)). “Accordingly, failure to take steps to preserve the confidential nature of a communication will destroy the attorney-client privilege.” PLEA v. Phoenix, supra.

The Court of Appeals then explained that in this case, it was undisputed that

Washington disclosed the existence of the PowerPoint and PLEA contends he described its content in detail. This disclosure appears to be inconsistent with the intent to treat the PowerPoint as a confidential communication.

Thus, despite the City's assertion that the PowerPoint was made in confidence for the purpose of securing legal advice and has at all times been treated as confidential by [PPD],’ PLEA has presented at least enough facts to raise an issue regarding whether the City and City officials present at the meeting actually intended to treat the PowerPoint as a confidential communication.

PLEA v. Phoenix, supra.

While PLEA raised this issue while the case was before the Superior Court judge, he or she “did not make any factual or legal determination on the issue,” which meant there was nothing for the Court of Appeals to review. PLEA v. Phoenix, supra. It therefore explained that in the

absence of further information in the record, we cannot determine whether the PowerPoint was intended to be treated as a confidential communication. Thus, we remand the issue to the superior court to determine whether the evidence supports PLEA's argument that the City failed to treat the PowerPoint as a confidential communication and thereby lost the protection of the attorney-client privilege.

PLEA v. Phoenix, supra.

The Subpoenas, the Text Messages and the 4th Amendment

On July 30, 2010, the State of Missouri charged James Clampitt with first-degree involuntary manslaughter in violation of Missouri Statutes § 565.024 and leaving the scene of a motor vehicle accident in violation of Missouri Statutes § 577.060. State v. Clampitt, __ S.W.3d __, 2012 WL 177394 (Missouri Court of Appeals 2012). The court says the “charges arose out of an automobile accident that occurred on June 13, 2010, in Audrain County, Missouri.” State v. Clampitt, supra.

On February 9, 2011, Clampitt filed a “motion to suppress `[a]ll evidence obtained through or from the search and seizure of [his] cell phone and cell phone records.’” State v. Clampitt, supra. The opinion notes that the State of Missouri obtained this information “from U.S. Cellular through the use of four investigative subpoenas issued in June and July of 2010.” State v. Clampitt, supra.

This is how the opinion describes the four subpoenas:

The first investigative subpoena was issued on June 18, 2010, and requested U.S. Cellular provide the State with tower location information for Audrain County as well as `text message content and detail for incoming and outgoing text messages’ for the number 573-473-8364 `for June 13, 2010 through present.’

The second investigative subpoena was also issued on June 18, 2010, and requested that U.S. Cellular provide the `text message content and detail for incoming and outgoing text messages for any and all phone numbers under the account’ of number 573-473-2599 `for June 13, 2010 through present.’

The third investigative subpoena was issued on June 24, 2010, and requested U.S. Cellular provide the State with all subscriber information for incoming and outgoing calls, including an `itemized statement of incoming and outgoing calls and text messages, and [n]ame, contact information and billing address of subscriber for’ the numbers 573-721-1917 and 573-253-8040 `for June 13, 2010 through present.’

The fourth investigative subpoena was issued on July 1, 2010 and requested U.S. Cellular provide `text message content and detail for incoming and outgoing text messages’ for the number 573-473-2599 `for June 24, 2010 through present.’

State v. Clampitt, supra.

The judge to whom the case was assigned held a hearing on Clampitt’s motion to suppress. State v. Clampitt, supra. At the hearing the Special Prosecutor

originally assigned to investigate Clampitt's case testified that she requested [his] incoming and outgoing text messages beyond the twenty-four-hour period surrounding the accident in hopes of obtaining an admission from Clampitt that either he or a member of his family was driving the vehicle at the time of the accident.

The Special Prosecutor also testified that she did not seek a warrant because she believed the text messages `were records that were in possession of a third party’ and that the investigative subpoenas were a sufficient means for obtaining such information from third parties.

State v. Clampitt, supra. In explaining why she didn’t get a warrant, the Special Prosecutor is referring to a 4^th Amendment principle I’ve written about before, i.e., that you have no 4^th Amendment expectation of privacy in information concerning your activities that is collected by and/or held by a third party.

The trial judge apparently didn’t buy the Special Prosecutor’s theory, because he/she "granted Clampitt's motion to suppress, finding” that Clampitt had a 4^th Amendment expectation of privacy “in the text messages,” which meant “the investigative subpoenas used to obtain the text messages were unreasonable,” i.e., violated the 4^th Amendment. State v. Clampitt, supra. The State of Missouri appealed, arguing that (i) Clampitt did not have a 4^th Amendment expectation of privacy in the text messages and (ii) even if he did, its use of investigative subpoenas to obtain information about the text messages did not violate the 4^th Amendment. State v. Clampitt, supra.

With regard to the first argument, the State argued, on appeal, that

Clampitt had no reasonable expectation of privacy in the contents of his text messages because the text messages were in the possession of a third party. The State points out that generally, `a person has no legitimate expectation of privacy in information he voluntarily turns over to third parties.’ Smith v. Maryland, 442 U.S. 735 (1979).

State v. Clampitt, supra. (For more on the Smith v. Maryland standard, check out this post.)

The Court of Appeals’ initial reaction to the State’s argument was to point out that

[w]hile this is true, courts have held that `the mere ability of a third-party intermediary to access the contents of a communication cannot be sufficient to extinguish a reasonable expectation of privacy.’ U.S. v. Warshak, 631 F.3d 266 (U.S. Court of Appeals for the 6^th Circuit 2010) (emphasis in original).

State v. Clampitt, supra.

As this opinion explains, the Warshak court, in the opinion cited above, found emails

are analogous to phone calls and letters, [and thereby entitled] to the same strong 4th Amendment protections . . . afforded to telephone and letter[s]. . . . The court emphasized that the police cannot intercept a letter without a warrant even after that letter has been handed over to third parties (mail carriers) for delivery. Warshak, supra (citing Ex Parte Jackson).

The court found the same to be true of phone calls, which must be transmitted through a service provider, who has the capacity to monitor and record the calls, yet callers are still `entitled to assume the words [they] utter[ ] into the mouthpiece [will] not be broadcast to the world.’ Warshak, supra. Thus, the court concluded `the threat or possibility of access is not decisive when it comes to the reasonableness of an expectation of privacy.’

State v. Clampitt, supra.

The Warshak court therefore held that because the 4^th Amendment applies to emails, officers must use a search warrant based on probable cause – rather than a subpoena – to obtain the contents of emails stored with an ISP. Warshak, supra. The Clampitt Court of Appeals found that the Warshak court’s rationale is equally applicable to

cell phone users' expectation of privacy in the contents of their text messages. Cell phone providers have the ability to access their subscribers' text messages; however, the providers' ability to access those messages does not diminish subscribers' expectation of privacy in their text message communications.

Rather, subscribers assume the contents of their text messages will remain private despite the necessity of a third party to complete the correspondence. Callers have long enjoyed 4th Amendment protection of the information they communicate over the phone. We see no reason why the same information communicated textually from that same device should receive any less protection under the 4th Amendment.

State v. Clampitt, supra.

The Court of Appeals also found that

society's continued expectation of privacy in communications made by letter or phone call demonstrates its willingness to recognize a legitimate expectation of privacy in the contents of text messages. What individuals once communicated through phone calls and letters can now be sent in a text message.

Thus, as text messaging becomes an ever-increasing substitute for the more traditional forms of communication, it follows that society expects the contents of text messages to receive the same 4th Amendment protections afforded to letters and phone calls. We therefore find that the trial court did not err in concluding that Clampitt had a reasonable expectation of privacy in the contents of his text messages.

State v. Clampitt, supra.

The Court of Appeals then addressed the State’s second argument, which was that even if the 4^th Amendment applied to Clampitt’s text messages, the State’s use of a subpoena did not violate the 4^th Amendment because it “was not unreasonable.” State v. Clampitt, supra. It noted that because the 4^th Amendment was not intended to interfere with the

power of the courts to compel the production of documentary evidence through the use of subpoena, prosecutors applying for investigative subpoenas do not have to comply with the 4th Amendment requirements necessary to obtain a search warrant. Johnson v. State, 925 S.W.2d 834 (Missouri Supreme Court 1996).

However, the 4th Amendment still applies to investigative subpoenas to the extent it requires `the subpoena be sufficiently limited in scope, relevant in purpose, and specific in directive so that compliance will not be unreasonably burdensome.’ Id.

State v. Clampitt, supra.

The Court of Appeals found that the subpoenas at issue in this case did not meet the above requirements, i.e., were not “sufficiently limited in scope or relevant in purpose.” State v. Clampitt, supra. As to the first point, it explained that the State had obtained

copies of all text messages sent to and received by Clampitt for a thirty-two day period, which included the date of the accident and the following thirty-one days. The . . . State obtained copies of all incoming and outgoing text messages, regardless of the recipient or sender. . . . [T]he Special Prosecutor testified that `[t]he period of time [specified in the subpoenas was] extended until . . . [Clampitt] admitted he was the driver of the vehicle.’

In other words. . . . [i]f no evidence with which to charge Clampitt had come about, presumably the State would still be issuing subpoenas in the hope of securing something it could use against him. The trial court found that the subpoenas were nothing but a fishing expedition, a finding amply supported by the record, and a practice uniformly recognized by the courts to be improper.

State v. Clampitt, supra.

The court also pointed out that the State had

no relevant purpose for requesting Clampitt's incoming and outgoing text messages beyond the time of the accident. The trial court found `the state was eavesdropping to see if [Clampitt] would make an admission.’. . . The State provided no evidence that it had reason to believe Clampitt had made admissions or divulged any details about his role in the accident via text messages.

Thus, without a more specific purpose, it is difficult to see how the search and seizure of Clampitt's incoming and outgoing text messages beyond the time of the accident was anything more than a fishing expedition for an admission from Clampitt, as the trial court found it to be. Thus, the trial court did not err in finding the investigative subpoenas to be an unreasonable search.

State v. Clampitt, supra.

In a unanimous opinion, the Court of Appeals therefore upheld the trial judge’s motion to suppress the text messages. State v. Clampitt, supra.

(The news story you can find here says Clampitt said he was “reading a text message when the accident occurred”. The story says he hit a man driving a lawnmower.)

BitTorrent, Copyright and the Third-party Subpoena

As Wikipedia notes, a subpoena “is a writ,” issued by “a court, that has authority to compel testimony by a witness or production of evidence”. Parties involved in litigation often use subpoenas to obtain testimony and/or evidence from an opposing party, but subpoenas can also be used to obtain testimony or evidence from others, as well.

As this site notes, a third-party subpoena is a subpoena served by one of the parties in a civil or criminal case on someone who is not directly involved in the case. This post is about a case in which a federal district court judge was asked to “quash.” As this site explains, a "`motion to quash’ is a request that a judge nullify or cancel” a subpoena, including a third-party subpoena.

That brings us to K-Beech, Inc. v. Doe, 2012 WL 262722 (U.S. District Court for the Eastern District of Pennsylvania 2012). As the opinion notes, K-Beech, Inc. brought an “action against a single `John Doe defendant, identified only by his internet protocol (`IP’) address, for direct and contributory copyright infringement of a motion picture called Virgins 4.” K-Beech, Inc. v. Doe, supra. As Wikipedia explains, John Doe, or “fictitious defendants”, are real individuals whom a plaintiff believes he/she/is has a

cause of action against in a lawsuit who . . . cannot be identified by the plaintiff before a lawsuit is commenced. As the statute of limitations for many [causes of action] . . . is generally very short, plaintiffs . . . often use contrived names in the title of proceedings (most commonly `John Doe’ . . .) and identify the person's role in the lawsuit in the body of the pleading. Generally, this tactic preserves the limitation period and . . . the plaintiff can later substitute the real name of the defendant once it is learned during the discovery process.

That is basically what K-Beech, Inc. seems to have done in this case. It submitted an

application for copyright registration of Virgins 4 with the U.S. Copyright Office on April 22, 2011. . . . Defendant allegedly downloaded and distributed the work through BitTorrent, a peer-to-peer file-sharing technology that allows a `swarm’ of users to download and upload pieces of a file from each other simultaneously and reassemble the pieces into a complete copy of the file. . . . K–Beech hired an investigator to identify the IP addresses involved in a swarm that was distributing Virgins 4 and determined Defendant was a participant in the swarm as of May 26, 2011. . . .

K–Beech filed this action on November 14, 2011, along with separate actions against other members of the swarm. With the Court's permission, K–Beech then served a third-party subpoena on Defendant's ISP prior to a Rule 26(f) conference to obtain the name and contact information associated with Defendant's IP address.

K-Beech, Inc. v. Doe, supra.

The Complaint K-Beech filed to initiate the suit explains how it identified John Doe as one of the participants in the swarm:

34. Plaintiff retained IPP, Limited (`IPP’) to identify the IP addresses that are being used by those people that are using the BitTorrent protocol and the internet to reproduce, distribute, display or perform Plaintiff's copyrighted Work.

35. IPP used forensic software named INTERNATIONAL IPTRACKER v1.2.1 and related technology enabling the scanning of peer-to-peer netWork for the presence of infringing transactions.

36. IPP extracted the resulting data emanating from the investigation, reviewed the evidence logs, and isolated the transactions and the IP addresses associated therewith for the file identified by the SHA-1 hash value of FB4FAOOEBAA9E332B559C1BD36EB5197A96C6541 (the `Unique Hash Number’).

37. The IP addresses, Unique Hash Number and hit dates show Defendant had copied a piece of Plaintiffs copyrighted Work identified by the Unique Hash Number, and was distributing it to other peers in a BitTorrent swarm on:

a. May 26, 2011 at 1:02 UTC.

38. Through the transaction(s), the Defendant's computer used its IP address to connect to the investigative server from a computer in this District in order to transmit a full copy, or a portion thereof, of a digital media file identified by the Unique Hash Numbers.

39. IPP's agent analyzed each BitTorrent `piece’ distributed by Defendant verified that re-assemblage of the piece(s) using a BitTorrent Client results in a fully playable digital motion picture of the Work.

40. IPP's agent viewed the Work side-by-side with the digital media file that correlates to the Unique Hash Numbers and determined that they were identical, strikingly similar or substantially similar.

Complaint, K-Beech, Inc. v. Doe, ¶¶ 34-40, 2011 WL 5835300 (U.S. District Court for the Eastern District of Pennsylvania 2011).

Earlier in the Complaint, K-Beech, Inc. alleges that

7. Defendant is known to Plaintiff only by IP address 98.114.206.125.

8. An IP address is a number that is assigned by an Internet Service Provider (an `ISP’) to devices, such as computers, that are connected to the Internet.

9. The ISP to which Defendant subscribes, Verizon Internet Services, can correlate the Defendant's IP address to the Defendant's true identity.

Complaint, K-Beech, Inc. v. Doe, supra, ¶¶ 34-40.

At some point, John Doe “learned of the subpoena through a letter from his ISP and filed a motion to quash . . . the subpoena,” which this judge denied. K-Beech, Inc. v. Doe, supra. John Doe then asked the judge to “reconsider the denial of his motion in light of a recent opinion from another judge in this District, which held that a pending copyright registration application is insufficient to make out a prima facie case of copyright infringement.” K-Beech, Inc. v. Doe, supra.

The judge began his opinion by noting that a motion seeking reconsideration of a ruling “may be granted only if: 1) there has been an intervening change in the controlling law; 2) new evidence has recently become available; or 3) it is necessary to correct a clear error of law or to prevent manifest injustice.” K-Beech, Inc. v. Doe, supra. He explained that in deciding whether to

permit a copyright owner to serve a subpoena on an ISP to discover an alleged infringer's true identity [courts] `have considered a variety of factors to weigh the need for disclosure against First Amendment interests,’ including whether there is `a concrete showing of a prima facie claim of actionable harm.’ Sony Music Entm't Inc. v. Does 1–40, 326 F.Supp.2d 556 (U.S. District Court for the Southern District of New York 2004).

In the motion for reconsideration, [John Doe] claims that K–Beech failed to show actionable harm because a pending copyright registration application alone does not support a prima facie claim of infringement. [He] relies on the language of 17 U.S.C. § 411(a), which provides that `no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.’

K-Beech, Inc. v. Doe, supra.

According to the judge, courts are split over the correct interpretation of § 411(a):

Some courts have taken an `application approach,’ under which a pending copyright registration application is sufficient to satisfy § 411(a), while others have taken a `registration approach,’ under which a certificate of registration issued by the Copyright Office is a prerequisite to suit. . . . Within this District, judges have reached differing conclusions.

K-Beech, Inc. v. Doe, supra. He also noted that in Reed Elsevier, Inc. v. Muchnick, 130 S.Ct. 1237 (2010), the U.S. Supreme Court declined to decide whether § 411(a)’s “`registration requirement is a mandatory precondition to suit that . . . district courts . . should enforce . . . by dismissing copyright infringement claims involving unregistered works.’” Reed Elsevier, Inc. v. Muchnick, supra. The Muchnick Court did hold that § 411(a) “does not restrict a federal court’s subject-matter jurisdiction”, i.e., does not deprive a court of the power to hear and decide a case. Reed Elsevier, Inc. v. Muchnick, supra. That suggested to this judge that

to the extent that courts previously adopted the registration approach under the mistaken view that they lacked subject matter jurisdiction while a registration application was pending, Muchnick may increase adoption of the application approach.

K-Beech, Inc. v. Doe, supra.

Since “there is no binding precedent on point,” the judge found that the U.S. Court of Appeals for the 9^th Circuit’s “post-Muchnik decision in Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612 (9^th Cir 2010). He explained that the Cosmetic Ideas case involved a copyright owner who sued for infringement while its

registration application was pending with the Copyright Office. . . . The Ninth Circuit held this sufficient under § 411(a). . . . The court first considered the text of § 411(a) and 17 U.S.C. § 101 but found no guidance on the interpretation of `registration.’ . . .

The court then turned to the Copyright Act as a whole and found that its plain language did not clearly support the registration approach or the application approach. . . . Because of this ambiguity, the court then looked to the statute's broader context and concluded that the application approach better serves the policies underlying modern copyright law, including the trend toward eliminating formalities that hindered copyright protection.

K-Beech, Inc. v. Doe, supra.

The judge also noted that under the current

copyright regime, an expressive work enjoys copyright protection even before registration; registration is merely a prerequisite to bringing an infringement action. . . . Moreover, § 411(a) permits an infringement suit to proceed even if the Copyright Office refuses registration, as long as the Register of Copyrights is notified of the suit. . . .

The registration approach thus forces parties to delay filing suit until the Copyright Office has accepted or rejected their registration, even though they will ultimately be able to sue either way. . . . This . . . could lead to the three-year statute of limitations for copyright infringement actions expiring before the Copyright Office has acted on an application. . . .

This possibility is difficult to reconcile with 17 U.S.C. § 410(d), which provides that, once a copyright registration has been approved, the effective date of registration is the day all necessary application materials were submitted. The application approach avoids unnecessary delay without diminishing the incentive to register. . . .

K-Beech, Inc. v. Doe, supra.

The judge therefore held that

the application approach is both permissible under the plain language of the statute and preferable as a matter of public policy. As K–Beech meets the registration requirement of § 411(a), this case is properly before the Court, and the Court will not quash the subpoena served on [John Doe’s] ISP.

K-Beech, Inc. v. Doe, supra.