Case Document 82 Filed 07/09/15 Page 1 of 4

 

 

IIan 
UN 
ITED STATES DISTRICT COURT 
SOUTHERN DISTRICT OF NEW YORK FILED

 

 

DAtRIRiittidUL 0 9 2015

 

 

Arista Records, LLC, et 

Plaintiffs,
(AJN)

ORDER
Vita Tkach, et a1. 

Defendants.

 

 

ALISON J. NATHAN, District Judge:
Pending before the Court is third?party CloudFlare, Inc?s motion to clarify the
preliminary injunction that this Court entered on June 1, 2015. Dkt. NO. 71. For the reasons

provided below, the motion is GRANTED in part and DENIED in part.
I. BACKGROUND
On May 13, 2015, the then?presiding Part 1 Judge of the Southern District Of New York

entered a temporary restraining order against Defendants Vita Tkach and Does 1-10
(d/b/a Groovesharkio and Dkt. No. 18. On June 1, 2015, the Court converted
that TRO into a preliminary injunction Dkt. No. 53. And on June 3, 2015, the Court
clari?ed that the PI covered those individuals and entities in active concert or participation with
the Defendants, including, in the context described in the June 3 Order, third~party CloudFlare.
Dkt. NO. 58. The Court assumes familiarity with this background material. On June 17, 2015,
CloudFlare filed a motion seeking further clari?cation of the PI. Dkt. No. 71. The motion was
fully briefed on July 8, 2015.

As explained previously, CloudFlare provides authoritative domain name system servers
for its customers, which means that when someone types a domain name such as
?groovesharkli? into a web browser, CloudFlare converts the domain name into the 1P address

for the website associated with that domain name so that the user can connect to the website they

Case Document 82 Filed 07/09/15 Page 2 of 4

are trying to reach. CloudFlare also optimizes the delivery of customers? websites from the
customers? origin server to Visitors? browsers. Brie?y summarized, the Court?s June 3, 2015
Order concluded that CloudFlare fell within the ambit of the PI because, by providing its services
to the domain name groovesharkli (as well as groovesharkpw, grooveshark.io, and
groovesharkvc) after it had knowledge of the TRO, it was aiding and abetting the Defendants?

infringement. Dkt. No. 58.
11. DISCUSSION
CloudFlare con?rms that it has complied with the Court?s June 3, 2015 Order and has

ceased providing services to groovesharkio, groovesharkpw, grooveshark.vc, groovesharkli,
and other domain names containing ?grooveshark.? CloudFlare Br. 2. The present dispute turns
on who has the burden of affirmatively identifying any additional infringing sites that are
operated by Defendants or those in active concert or participation with them and that are using
CloudFlare?s services?CloudFlare or Plaintiffs.

CloudFlare contends that ?further compliance [with the Pl] appears to leave [it] in an
untenable position? because ?a plausible reading of the preliminary injunction would seem to
require CloudFlare to act as the enforcers of Plaintiffs? trademarks and to determine whether any
of its customers, present andfulure, are entitled or are not entitled to use domain names that
contain ?grooveshark,? ?in whole or in part,? depending on whether the customer has a license
from Plaintiff UMG or whether the customer?s use is non?infringing as a matter of law.?
CloudFlare Br. 2. CloudFlare also represents to the Court that it ?currently has no automated
meansof filtering out users at the time of registration based on the domain names they use.?
CloudFlare Br. 6. Based on this concern, CloudFlare ?asks the Court to modify the injunction to
make clear that CloudFlare must cease serving a domain name only when given notice by the
Plaintiffs that the domain name infringes Plaintiffs? trademark,? CloudFlare Br. 2, or if
?CloudFlare has knowledge of an infringement,? CloudFlare Reply 2.

Plaintiffs, in contrast, place the initial burden for identifying potentially infringing

CloudFlare customers on the shoulders of CloudFlare, and they contend that, if CloudFlare is in

2

Case Document 82 Filed 07/09/15 Page 3 of 4

doubt as to whether a possibly infringing site is authorized to use the Grooveshark mark, it
should simply pick up the phone and call Plaintiffs. Opp?n Br. 5.

The Court concludes that the correct solution lies somewhere in between the rhetoric of
the two sides. On the one hand, this is Plaintiffs? lawsuit, not CloudFlare?s, which remains
merely a third party to this action. Moreover, based on the Plaintiffs? previous ?lings, it appears
that Plaintiffs are actively policing their intellectual property and are identifying new infringing
sites as they appear. See Dkt. No. 58 at 2?3. Thus, it is consistent with this Court?s prior Orders
to require Plaintiffs to bring any new infringing sites to CloudFlare?s attention, rather than
require CloudFlare set up a filter for its customer database and bring infringing sites to Plaintiffs?
attention. If, on the other hand, CloudFlare has knowledge of an infringement on the part of one
of its customers, it may not sit on its hands. Thus, it is also consistent with this Court?s prior
Orders to require CloudFlare to cease serving that customer??as CloudFlare itself proposes?-
even if it has not yet received a speci?c request from the Plaintiffs. CloudFlare Br. 2.

Finally, CloudFlare?s proposed order, which was submitted through Orders and
Judgments, contains an additional request that is not mentioned in its opening brief and only
vaguely referenced in its reply: upon receipt of notice from Plaintiffs that a domain name
infringes any of the Grooveshark marks, CloudFlare would have five days to terminate a
customer?s account and would be permitted to first notify the customer of its intention to
terminate its services, providing the customer an opportunity to file an objection with the Court.
Although the Court agrees with CloudFlare that some reasonable amount of time is necessary to
achieve compliance, the Court shares Plaintiffs? concern that a five?day delay could potentially
frustrate the effective enforcement of the PI based on the previous history of ?grooveshark?
copycat sites moving from one country-code domain to another. See Dkt. No. 58 at 2.
Moreover, by placing the burden on Plaintiffs to identify any additional ?grooveshark? sites, the
problem of incorrectly identifying an infringing website seems greatly reduced. In any event,

upon receipt of notice or knowledge that a domain name infringes any of the Grooveshark marks,

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CloudFlare is certainly free to immediately notify customers of the impending termination of
their accounts.
CONCLUSION

For the reasons stated above, CloudFlare?s motion is GRANTED in part and DENIED in

part. Consistent with the PI and this Court?s June 3, 2015 Order, the Court concludes that the
burden is on Plaintiffs to bring additional infringing sites that are operated by Defendants or
those in active concert or participation with them and that are using CloudFlare?s services to
CloudFlare?s attention. At the same time, if CloudFlare has knowledge that a domain name it is
serving infringes any of the Grooveshark marks it must act to cease providing services
even if it did not yet learn of the infringement from Plaintiffs.

Thus, the Court clari?es the PI as follows: Upon receipt of notice from Plaintiffs or if
CloudFlare otherwise has knowledge of an infringement on the part of one of its customers,
CloudFlare shall cease providing its services to that customer as soon as possible, but no later
than 48 hours after receiving such notice or obtaining such knowledge. CloudFlare is, of course,
free to expeditiously notify customers of the impending termination of their accounts as a result
of this and related Court Orders.

In the event of any future dispute regarding the PI, the Court encourages Plaintiffs and
CloudFlare to make a greater effort at reaching a practical compromise.

This resolves Dkt. No. 71.

SO ORDERED.

    
 

 

Dated: July 2015
New York, New York

 

J. NATHAN
United States District Judge