Case 1:15-cv-03701-AJN Document 58 Filed 06/03/15 Page 1 of 11

USDCSDNY
DOCUJVILVf
ELEClROT'iiICALLY FILED.
DOC#:

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

DATE

FlLEii~·Ju1ro 3 2015

Arista Records, LLC, et al.,
Plaintiffs,
15-CV-3701 (AJN)

-vMEMORANDUM
&ORDER

Vita Tkach, et al.,
Defendants.

ALISON J. NATHAN, District Judge:
On May 13, 2015, a Judge of this Court sitting in Part 1 entered a temporary restraining
order ("TRO") against Defendants Vita Tkach and Does 1-10 (d/b/a Grooveshark.io and
Grooveshark.pw). Dkt. No. 18. On May 22, 2015, Plaintiffs filed with this Court a
"supplemental order and order to show cause requiring third party CloudFlare, Inc. to comply
with the pending temporary restraining order." Dkt. No. 35. As detailed in this Court's May 27,
2015 Order, the Court held a conference with Plaintiffs and CloudFlare on May 26, 2015 and set
a briefing schedule for Plaintiffs' motion for a supplemental order, which was to "determine
whether CloudFlare is bound by the existing TRO and whether it will be bound by any
forthcoming preliminary injunction against the Defendants, if one is entered." Dkt. No. 40 at 2.
On June 1, 2015, the Court entered that preliminary injunction against the Defendants. Dkt. No.
53. Therefore, as a practical matter, the present motion is to determine whether CloudFlare was
bound by the TRO and now is bound by the existing preliminary injunction (the terms of which
are substantially identical to the TRO). CloudFlare has taken the position that the TRO did not
apply to it largely because of the "passive" nature of its services. As described in greater detail
below, the Court disagrees.

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I.

BACKGROUND
On May 5, 2015, the Court entered a Stipulation, Consent Judgment, and Permanent

Injunction against Escape Media Group, Inc. ("Escape"), which operated the website
www.grooveshark.com ("Grooveshark"). See Dkt. No. 108 in Capitol Records, LLC v. Escape

Media Grp., Inc., No. 12 Civ. 6646 (AJN)(SN) (S.D.N.Y. May 5, 2015). 1 Similarly, on May 1,
2015, in a separate action, Judge Griesa entered a Stipulation, Consent Judgment, and Permanent
Injunction against Escape and its founders. See Dkt. No. 107 in Arista Music v. Escape Media

Grp., Inc., No. 11 Civ. 8407 (TPG) (S.D.N.Y. May 1, 2015). 2 As part of this latter settlement,
among other things, Escape conveyed to PlaintiffUMG Recordings, Inc. ownership of its
federally registered trademarks relating to the Grooveshark service. Id.
A.

The Temporary Restraining Order

Shortly after the consent judgments were entered, a "copycat" version of Grooveshark
appeared on the internet, which led Plaintiffs to file the present action on May 12, 2015 against
Defendants Vita Tkach and Does 1-10 who are allegedly operating the copycat version of
Grooveshark.

Comp!.~~

7-9. That same day, Plaintiffs obtained from the Part 1 Judge of this

Court a TRO against Defendants "and any persons acting in concert or participation with them or
third parties providing services used in connection with Defendants' operations" from, among
other things, "[u ]sing, linking to, transferring, selling, exercising control over, or otherwise
owning the domain names grooveshark.io or grooveshark. pw or any other domain name that
incorporates, in whole or in part, any of Grooveshark Marks" and from "[ d]irectly or secondarily
infringing Plaintiffs' copyrighted sound recordings via the [Defendants' service] or any
variations thereof." Dkt. No. 18.
Plaintiffs explain that they were then drawn into what they describe as a technological
globetrotting game of"whack-a-mole" in an effort to enforce the TRO. On May 13, 2015,
1

The Court had earlier found Escape liable for copyright infringement based on its operation of
Grooveshark. Capitol Records, LLC v. Escape Media Grp., Inc., No. l 2-CV-6646 (AJN), 2015 U.S. Dist. LEXIS
38007 (S.D.N.Y. Mar 5, 2015).
2
Judge Griesa also found Escape and its founders liable for copyright infringement in the separate action.
UMG Recording v. Escape Media Grp., Inc., No. 11 Civ. 8407, 2014 U.S. Dist. LEXIS 137491 (S.D.N.Y. Sept. 29,
2014).

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Plaintiffs served the TRO on Defendants and Namecheap, Inc., a California-based domain name
registrar through which Defendants had registered "grooveshark.io" (.io is the country-code
domain reserved for the British Indian Ocean Territory) and "grooveshark.pw" (.pw is the
country-code domain reserved for the Republic of Palau). Pls.' Br. 3 (citing Doroshow Deel.
~~

3-4). Namecheap, Inc. complied with the TRO, which effectively disabled the ".io" and

".pw" Grooveshark domain names. Pls.' Br. 3 (citing Suppl. McDevitt Deel.~ 3). Defendants
then registered "grooveshark.vc" (.vc is the country-code domain reserved for Saint Vincent and
the Grenadines) through Dynadot, which was subsequently served with the TRO. Pls.' Br. 3
(citing Doroshow Deel.~ 5). After Dynadot complied with the TRO, the "groveshark.vc"
domain name was disabled. Pls.' Br. 3 (citing Suppl. McDevitt Deel.

~

4). Defendants then

registered a "grooveshark.li" domain name (Ji is the country-code domain reserved for the
principality of Liechtenstein). Pls.' Br. 3-4 (citing Suppl. McDevitt Deel.

~

5). The domain

name registrar through which Defendants registered the .li domain is located in Switzerland. Id.
At roughly this point, Plaintiffs opted for a different tactic and served the TRO on CloudFlare.
B.

CloudFlare, Inc.'s Services

CloudFlare is an internet service provider that provides authoritative domain name
system servers for its customers as a means of providing content delivery network and reverseproxy services. Opp'n Br. 3-4. CloudFlare explained that an "authoritative domain name
server" is a "computer on the Internet that is designated by the domain name owner to report the
correct IP address for that domain, which information is then propagated to other DNS servers
worldwide as it is needed." Opp'n Br. 3 (citing Guomundsson

Deel~~

11-13). In laymen's

terms, this appears to mean that when someone types a domain name such as "grooveshark.li"
into a web browser, the Defendants have engaged CloudFlare to convert the domain name into
the IP address for the website associated with that domain name so that the user can connect to
the website they are trying to reach. Without CloudFlare, a user could still get to
"grooveshark.li" if the user had the actual IP address for the website associated with that domain
name; alternatively, Defendants could obtain CloudFlare's authoritative domain name system

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server from another third-party service provider comparable to CloudFlare or Defendants could
provide that same service on their own. Guomundsson Deel.~~ 15, 19-20; Foster Deel.~ 5.
CloudFlare also "optimizes the delivery of customers' websites from the customers' origin server
to visitors' browsers. This gives visitors to a customer's website faster page load times and
better performance, while blocking threats and abusive bots and crawlers from attacking the
websites." Opp'n Br. 3 (citing Guomundsson

Deel.~~

9, 16).

On May 2, 2015, a user opened a free account at CloudFlare and configured the domain
names grooveshark.pw and grooveshark.io to use CloudFlare's services. Opp'n Br. 4 (citing
Paine Deel~ 7). On May 13, 2015, an anonymous user using a different email address and
server IP address opened a new free account and configured the domain name grooveshark.vc to
use CloudFlare's services. Id.
On May 14, 2015, Plaintiffs served a copy of the TRO on CloudFlare and requested that
it cease providing support to the Grooveshark sites. Doroshow Deel.~ 6; Opp'n Br. 4.
CloudFlare confirmed receipt of the TRO, but stated that it did not construe the TRO as applying
to it, insisting that Plaintiffs seek an order from this Court requiring CloudFlare's compliance.

Id. Then, on May 15, 2015, an anonymous user opened yet another free account at CloudFlare
and configured the domain name grooveshark.li to use CloudFlare's services; this anonymous
user used another email address and server IP address that were not the same as either of the ones
used earlier. Opp'n Br. 5 (citing Paine Deel.
C.

iJ 7).

The Motion for Contempt/Clarification

As explained in the Court's May 27, 2015 Order, on May 22, 2015, Plaintiffs filed an ex

parte "Proposed Supplemental Order to Show Cause" requesting a court order requiring thirdparty CloudFlare, Inc. to comply with the existing TRO. Dkt. No. 40. After a conference was
held on May 26, 2015, the Court clarified that it would construe Plaintiffs' request as an
expedited contempt motion for violation of the existing TRO or, alternatively, an expedited
motion for clarification of the existing TRO. Dkt. No. 40 at 2. The Court set a briefing schedule
and provided the parties with an opportunity to request an evidentiary hearing, Dkt. No. 40 at 2,
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which they declined, Dkt. No. 48. Therefore, factual findings contained herein are based on the
parties' written submissions, which were fully submitted today-June 3, 2015. Both sides
requested an expedited process and this Court is issuing this Order on an expedited basis.

II.

DISCUSSION
Plaintiffs contend that CloudFlare is in active concert or participation with (i.e., aiding

and abetting) the Defendants because it (1) owns and operates the authoritative name server for
grooveshark.li (and the other Grooveshark sites) and (2) optimizes the performance of
grooveshark.li (and the other Grooveshark sites), making them faster and more resistant to
malicious attack. Although there is no genuine factual dispute regarding the services CloudFlare
provides to the Grooveshark sites, CloudFlare contends that it should not be bound by the
injunction because its service is "passive" and not necessary for the operation of the Grooveshark
sites.
CloudFlare rests its legal argument on the longstanding principal that a court "cannot
lawfully enjoin the world at large, no matter how broadly it words its decree." Alemite Mfg.

Corp. v. Sta.ff, 42 F.2d 832, 832 (2d Cir. 1930) (Hand, J.). The problem for CloudFlare is the
equally venerable proposition that "a person who knowingly assists a defendant in violating an
injunction subjects himself to civil as well as criminal proceedings for contempt." Id.; see also
l lA Charles A. Wright, et al., Federal Practice and Procedure § 2956 at 394 (3d ed. 2013)
(explaining that Alemite "clearly does not grant immunity to someone who knowingly aids,
abets, assists, or acts in concert with a person who has been enjoined from violating the
injunction"). Federal Rule of Civil Procedure 65 expressly incorporates this countervailing
proposition in that every TRO or injunction binds not only the parties and their agents but also
"other persons who are in active concert or participation with them." Fed. R. Civ. P. 65(d)(2).
CloudFlare makes two primary arguments in opposition. First, it takes the position that it
is not in such "active concert or participation" with Defendants because its "systems have
passively and automatically served the domain names at issue." Opp'n Br. 9. It further argues
that it need not comply with the TRO because, even if it complies, the Plaintiffs will not

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accomplish their ultimate goal: "Even if CloudFlare-and every company in the world that
provides similar services-took proactive steps to identify and block the Defendants, the website

would remain up and running at its current domain name." Opp'n Br. 1. The Court finds neither
argument persuasive.

A.

CloudFlare's Passivity Argument

Turning to CloudFlare's passivity argument first, the Court notes that there is a surprising
dearth of authority addressing the meaning of Rule 65 's "active concert or participation"
language in the context of internet service providers such as CloudFlare. The authority
CloudFlare relies on either does not support the point for which it is offered or is factually
inapposite. See Opp'n Br. 6-10. And the Court itself was unable to find on-point authority
beyond the two cases discussed below. Therefore, the Court must rely on more general
applications of Rule 65, which have noted that "active concert or participation" exists if the third
party "aided and abetted" the party subject to the injunction. This requires "show[ing] that the
non-party had actual knowledge of the judicial decree and violated it, and that the challenged
action was taken for the benefit of, or to assist, a paiiy subject to the decree." Adcor Indus. v.
Bevcorp, LLC, 411 F. Supp. 2d 778, 794 (N.D. Ohio 2005) (citing Microsystems Software, Inc. v.
Scandinavia Online AB, 226 F.3d 35, 43 (1st Cir. 2000); Additive Controls & Measurement Sys.,
Inc. v. Flowdata, Inc., 154 F.3d 1345, 1353 (Fed. Cir. 1998)); see also Lindlandv. U.S.
Wrestling Ass 'n, 227 F.3d 1000, 1006 (7th Cir. 2000) ("The 'active concert or participation'

clause is designed to prevent what may well have happened here: the addressee of an injunction,
eager to avoid its obligations, persuades a friendly third party to take steps that frustrate the
injunction's effectiveness." (citing Reich v. Sea Sprite Boat Co., 50 F.3d 413 (7th Cir. 1995)).
There is no real dispute that CloudFlare had knowledge of the TRO at least as of May 14,
2015 and that it subsequently permitted an anonymous user to establish a free account that
configured the domain name grooveshark.li to use CloudFlare's services. CloudFlare's
authoritative domain name server translates grooveshark.li as entered in a search browser into the
correct IP address associated with that site, thus allowing the user to connect to the site.
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Connecting internet users to grooveshark.li in this manner benefits Defendants and quite
fundamentally assists them in violating the injunction because, without it, users would not be
able to connect to Defendants' site unless they knew the specific IP address for the site. Beyond
the authoritative domain name server, CloudFlare also provides additional services that it
describes as improving the performance of the grooveshark.li site. Opp'n Br. 3.
As noted, there is limited authority addressing services such as CloudFlare's, but the few
courts that have addressed comparable technological services have similarly held that they fall
within an injunction's reach if those services are knowingly used to facilitate injunction
violations. See, e.g., The North Face Apparel Corp. v. Fujian Sharing Imp. & Exp. Ltd Co., No.
10 Civ. 1630 (AKH), slip op. 4-6 (S.D.N.Y. June 24, 2011) ("Public Interest Registry, for
example, cannot continue to make the connections that enable customers attracted to defendants'
websites to access those websites."); South Cent. Bell Tel. Co. v. Constant, Inc., 304 F. Supp.
732, 736 (D.La. 1969) ("As soon as South Central Bell was apprised of the fact that the
subscriber, Constant, was, by use of South Central Bell's equipment, violating the injunction
imposed by this Court, it had a duty not to act in any way in concert with Constant to effectuate
or perpetuate the violation. South Central Bell had the means to prevent its equipment from
being used to violate the injunction, and its failure to do so would, at the very least, have
amounted to a passive participation in the violation."). Indeed, at least one district court has
included CloudFlare within the reach of an injunction aimed at an infringing website: "[A ]11
website hosting, website optimization, and any other company or person that provides website
services for the MFN domains, including without limitation, CloudFlare, Inc., shall within 24
hours of receipt of this Order, cease all website services made in connection with the MFN
domains." Dish Network LLC v. Dillion, No. 12cvl57 BTM (NLS), 2012 U.S. Dist. LEXIS
13277, at *14 (S.D. Cal. Feb. 3, 2012).
In opposition, CloudFlare relies heavily on Blockowicz v. Williams, 630 F.3d 563 (7th
Cir. 2010), which involved a third-party website that refused to remove allegedly defamatory
content posted by enjoined defendants. But that case, which applied an abuse of discretion

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standard of review to a district court's refusal to enforce an injunction against third parties, is
distinguishable from the facts here. To begin with, the Blockowicz court emphasized that the
only act of the third-party service provider, "entering into a contract with the defendants,
occurred long before the injunction was issued." Id. But CloudFlare acknowledges that it
permitted an anonymous user to register a "grooveshark" domain name to use its services after it
had received notice of the TRO. The Blockowicz court also highlighted the fact that the thirdparty service provider merely continued to host the defamatory content on its website as it had
done prior to the issuance of the injunction. In contrast, CloudFlare's authoritative domain name
server connects users to the new Grooveshark site by translating a user's browser entry into the
IP address for the site, and it also ensures faster load times and optimal performance for the site,
both of which are far from the passive hosting of content at issue in Blockowicz.
CloudFlare's passivity argument also implies that it should not be bound by the
injunction because it is not motivated by a desire to help Defendants violate the injunction;
rather, CloudFlare contends it is merely providing the same service to Defendants that it would
provide to anyone else. But the Second Circuit has "held that a court's inquiry into the fact of
aiding and abetting is 'directed to the actuality of concert or participation, without regard to the
motives that prompt the concert or participation."' Eli Lilly & Co. v. Gottstein, 617 F.3d 186,
193 (2d Cir. 2010) (quoting N. Y. State Nat 'l Org. for Women v. Terry, 96 l F.2d 390, 397 (2d Cir.
1992), vacated on other grounds sub nom., Pearson v. Planned Parenthood Margaret Sanger
Clinic (Manhattan), 507 U.S. 901 (1993)). Thus, CloudFlare's motivations are not at issue.

B.

CloudFlare's Futility Argument

CloudFlare's second, or "futility," argument is equally unpersuasive. In essence,
CloudFlare contends that Plaintiffs will obtain a short-lived victory if it complies with the
temporary restraining order because another third-party service provider could provide the same
service or Defendants could provide that service on their own. In other words, even if
CloudFlare complied with the injunction, this would not "necessarily" shut down grooveshark.li
or other various incarnations of Grooveshark that Defendants might set up. But just because
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another third party could aid and abet the Defendants in violating the injunction does not mean
that CloudFlare is not doing so. Similarly, the Court is unaware of any principle requiring
Plaintiffs to show that Defendants' site would be inaccessible but for CloudFlare's services; they
need only show that CloudFlare is in active concert or participation with Defendants.
CloudFlare also suggests that it would not be able to comply with the injunction because
it "has no way of identifying accounts opened by the Defendants, other than their alleged use of
domains containing the name 'grooveshark."' Opp'n Br. 12 (emphasis added). But as Plaintiffs
note, "[t]he word 'grooveshark' is a highly-distinctive registered trademark, owned by Plaintiff
UMG, and preventing CloudFlare from 'linking to' any domain name that includes the
'grooveshark' word mark is precisely what the TRO requires (among other things), regardless of
which top-level domain (e.g., .Ii, .io, .pw, .vc., etc.) is used." Reply Br. 8-9. Thus, far from
being unable to comply, CloudFlare acknowledges that it can identify customers using domain
names containing the name "grooveshark."
Finally, CloudFlare suggests that the TRO could potentially enjoin any service provider
that is remotely connected to the new Grooveshark site(s). The Court does not share this concern
in light of the wording of the TRO, which is sufficiently narrow in scope that "the party enjoined
[is] able to ascertain from the four corners of the order precisely what acts" are forbidden,

Sanders v. Air Line Pilots Association, 473 F.2d 244, 247 (2d Cir. 1972). While there may be
more attenuated services that indirectly support Defendants' sites, the Court is addressing the
facts before it, which involve a service that is directly engaged in facilitating access to
Defendants' sites with knowledge of the specific infringing names of those sites. In this respect,
CloudFlare seems quite similar to a domain name registrar, which both parties appear to agree is
covered by the injunction.
In sum the Court concludes that CloudFlare is in active conce1i or participation with the
Defendants based on the following facts: (1) CloudFlare admittedly owns and operates the
authoritative domain name server for the new Grooveshark sites, which connects users entering
the Grooveshark domain names into a web browser to the specific IP address associated with that
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site; (2) CloudFlare provides other services designed to improve the performance of the new
Grooveshark sites; and (3) CloudFlare began providing its services to grooveshark.li after it
acknowledged receipt of the TRO. Furthermore, for the purpose of determining whether
CloudFlare is in active concert or participation with the Defendants, it is not determinative that
CloudFlare's services are automated, that CloudFlare lacks a specific desire or motivation to help
the Defendants violate the injunction, or that the Grooveshark sites would continue to exist even
without CloudFlare's assistance. The Court thus hereby concludes and clarifies that CloudFlare
was bound by the TRO and is now bound by the existing preliminary injunction.

C.

Attorney's Fees

Plaintiffs made only a passing request for attorney's fees in their opening brief and did
not press their case for attorney's fees in their reply brief despite the fact that CloudFlare offered
arguments against an award of attorney fees in its opposition. Thus, it appears that Plaintiffs
have abandoned their halfhearted request for attorney's fees. See, e.g., Adams v. NY State Educ.
Dep 't, 752 F. Supp. 2d 420, 452 n.32 (S.D.N.Y. 2010) (Peck, M.J.) (collecting cases); In re
Compact Disc Minimum Advertised Price Antitrust Litig., 456 F Supp. 2d 131, 152 (D. Me.

2006) ("A party's failure to oppose specific arguments in a motion to dismiss results in waiver of
those issues."). Even if not abandoned, Plaintiffs failed to establish a willful violation necessary
to support an award of attorney's fees and CloudFlare advanced a colorable, good-faith basis for
believing that it was not covered by the injunction. Therefore, the Comi will not award
attorney's fees. See, e.g., GMA Accessories, Inc. v. Eminent, Inc., No. 07 Civ. 3219 (LTS)(DF),
2008 U.S. Dist. LEXIS 55107, at *34-35 (S.D.N.Y. May 29, 2008) ("Most courts in this Circuit
strictly adhere to the general principle that, for attorneys fees and costs to be awarded on a
contempt motion, the contemnor's conduct must have been willful. But if the Court does find
that the defendant's violation was willful it should then award attorneys' fees and costs unless
there are persuasive grounds to deny them." (citations and internal quotation marks omitted)).
Going forward, however, CloudFlare is now aware that it is bound by the injunction so any

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future failure to comply might expose it to a contempt finding that could result in the award of
attorney's fees or other consequences.

III.

CONCLUSION
For the reasons stated above, the Court concludes and clarifies that third-party service

provider CloudFlare, Inc. was bound by the TRO and is bound by the existing preliminary
injunction in this case.
SO ORDERED.

--1_,

Dated: June
2015
New York, New York

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