1:18-cv-10956
S.D.N.Y.Apr 2, 2019Background
- Malibu Media sued an anonymous John Doe (identified by IP) for copyright infringement on Nov. 23, 2018.
- Supreme Court’s Fourth Estate (decided Mar. 4, 2019) holds a suit may be filed only after the Copyright Office has registered the copyright, not merely after filing an application.
- Court ordered Malibu to show cause why the complaint should not be dismissed for failing to allege that registration had been completed before suit.
- On Mar. 12, 2019 Malibu filed an amended complaint listing registration numbers and dates; those dates were actually application filing dates, not dates the Copyright Office approved registration.
- The court found the original complaint was filed before registration had been completed and therefore was defective; Malibu argued the amended complaint cured the defect (via relation-back or by making the action compliant once registration later occurred).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether an amended complaint filed after the Copyright Office completes registration can cure an original complaint that was filed prior to registration under 17 U.S.C. § 411(a) | Amended complaint should relate back or otherwise cure the original filing so the action becomes compliant once registration is completed | Original complaint was defective at filing because registration had not been made; later amendment cannot retroactively cure that defect | Held: No. A suit is “instituted” when the initial complaint is filed; post-filing registration and amendment cannot retroactively validate a prematurely filed action. |
| Whether relation-back doctrine allows an amendment alleging post-filing compliance with pre-suit administrative requirements to cure the original defect | Relation-back should apply to avoid waste/inefficiency; amendment alleges registration before amendment filing | Relation-back cannot create retroactive satisfaction of a statutory precondition to suit; Fourth Estate treats registration as prerequisite to instituting suit | Held: Relation-back cannot be used to retroactively satisfy § 411(a); administrative-exhaustion analogies bar relation-back here. |
| Whether the court should dismiss the action sua sponte for failure to satisfy § 411(a) | Plaintiff did not contest court’s authority; urged cure by amendment | Court may and should enforce § 411(a) preconditions; dismissal appropriate when defect existed at institution of suit | Held: Court dismissed the amended complaint in its entirety (without prejudice) and quashed the subpoena. |
| Whether adding new copyright claims in the amended complaint is permissible when those claims would have been premature at the time the action was instituted | Plaintiff added four additional copyrights in amended complaint | Such additions cannot be retroactively treated as timely if they were premature when the action began | Held: Amended or added claims that were premature at institution are not saved by subsequent amendment; dismissal required (court did not rule on all consolidation/timeliness permutations). |
Key Cases Cited
- Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019) (registration occurs when Copyright Office registers after examining application)
- Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010) ( § 411(a) is a precondition to filing, not a jurisdictional bar)
- United States ex rel. Wood v. Allergan, Inc., 899 F.3d 163 (2d Cir. 2018) (an action is instituted when the initial complaint is filed; amendment does not institute a new action)
- McNeil v. United States, 508 U.S. 106 (1993) (an action is instituted by invocation of the judicial process through filing)
- Warren v. John Wiley & Sons, Inc., 952 F. Supp. 2d 610 (S.D.N.Y. 2013) (plaintiff bears burden to allege compliance with § 411(a))
- Techniques, Inc. v. Rohn, 592 F. Supp. 1195 (S.D.N.Y. 1984) (complaint failing to plead § 411(a) compliance is defective and subject to dismissal)