A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Motion to Protect Anonymity of Doe Defendants in Trademark Infringement Action Denied

In a June 26, 2013 ruling,Judge Lorna G. Schofield denied a motion by certain Doe defendants to protect their anonymity under the First Amendment in the face of claims that their blog posts infringed plaintff Bloomberg, L.P.'s trademarks. The blogs at issue were hosted by blogger.com and blogspot.com, which are owned by Google, Inc. Soon after filing the action, Bloomberg moved for expedited discovery and for leave to serve subpoenas on Google to discover the identity of the bloggers. The Court granted the motion, and the two Doe defendants then moved for reconsideration and to quash the subpoenas. Judge Schofield ruled that she lacked the power to quash the subpoenas because they had been issued in the Northern District of California, not the Southern District.

On the substantive issue of whether to protect the anonymity of the bloggers, the Court noted the case law holding that a party cannot use the First Amendment to infringe on another's intellectual property rights. Judge Schofield cited Second Circuit precedent applying five factors in determining whether anonymity should be preserved. The "five factors to be considered . . .: (1)[the] concrete[ness of the plaintiff's] showing of a prima facie claim of actionable harm, . . . (2)[the] specificity of the discovery request, . . . (3) the absence of alternative means to obtain the subpoenaed information, . . . (4) [the] need for the subpoenaed information to advance the claim, . . . and (5) the [objecting] party's expectation of privacy." Judge Schofield considered the five factors in turn, and held that "each of the five factors supports granting Plaintiffs' request for expedited discovery." The Court denied the Doe defendants' motion, and allowed the discovery to proceed.
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