Simon J. Burchett Photography, Inc. v. A.P. Moller Maersk A/S

Background

The plaintiff filed an amended complaint on February 28, 2019. The defendant then moved to dismiss. The plaintiff later asked for permission to voluntarily dismiss the case, but it did not complete that dismissal. The plaintiff also did not file papers opposing the defendant’s motion to dismiss.

After the case was reassigned, the plaintiff withdrew its request for voluntary dismissal and asked for permission to file a second amended complaint. The stated reason was that the copyright for the image at issue had been registered on March 18, 2019, after the amended complaint was filed.

Issue

Section 411(a) of the Copyright Act provides that a copyright infringement lawsuit involving a United States work cannot be filed until the copyright claim has been registered. The Supreme Court had clarified that filing a registration application is not enough; registration occurs only when the copyright is actually registered.

The issue was whether the plaintiff could correct its complaint by filing a second amended complaint after obtaining registration, even though the operative complaint had been filed before registration.

Ruling

The court adopted the reasoning of a recent decision by another judge in the Southern District of New York, which held that a post-registration amendment cannot cure a complaint filed before registration. Judge Failla stated that allowing the amendment would undermine the requirement that registration occur before suit is filed.

The court denied the plaintiff’s motion for leave to file a second amended complaint.

The court separately noted that the defendant’s motion to dismiss remained pending and was unopposed. The motion argued, among other things, that the plaintiff had not adequately alleged personal jurisdiction, that the claims were subject to arbitration, and that the complaint failed to state a claim because it was filed before copyright registration. The court stated that the complaints were deficient when filed and would be dismissed under Federal Rule of Civil Procedure 12(b)(6) even if the court had jurisdiction, but it did not enter a ruling granting or denying that motion in this order.

Instead, the court directed the plaintiff to notify the court by March 9, 2020, whether it still wished to voluntarily dismiss the action. It described two possible procedures for doing so and allowed the defendant to respond by March 13, 2020.