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Malibu Media, LLC v. Doe

United States District Court for the Southern District of New York

April 2, 2019, Decided; April 2, 2019, Filed

18-CV-10956 (JMF)



JESSE M. FURMAN, United States District Judge:

Section 411(a) of the Copyright Act provides, with certain exceptions not relevant here, that "no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with" Title 17 of the United States Code. 17 U.S.C. § 411. On March 4, 2019, in Fourth Estate Public Benefit Corp. v., LLC, the Supreme Court held that "'registration . . . has been made' within the meaning of 17 U.S.C. § 411(a) not when an application for registration is filed, but when the Register has registered a copyright after examining a properly filed application." 139 S. Ct. 881, 892, 203 L. Ed. 2d 147 (2019). The question presented here is whether a plaintiff that improperly filed suit before a copyright was registered can cure that defect by amending its complaint after the Register has completed registration of the copyright. The Court holds that such a prematurely filed suit must be dismissed notwithstanding a plaintiff's post-registration amendment.

The question arises here in a somewhat [*2]  unusual posture. On November 23, 2018, Plaintiff Malibu Media, LLC filed suit against an anonymous Defendant, John Doe, known to Plaintiff only by his or her Internet Protocol address. See Docket No. 1 ("Compl."). The Court granted Plaintiff leave to serve a third-party subpoena on Defendant's internet service provider for the purpose of learning his or her name and address; Plaintiff then served the subpoena, and Defendant — proceeding anonymously — moved to quash it. See Docket Nos. 13, 15. After the motion to quash was fully submitted, the Court ordered Plaintiff to show cause why its original Complaint should not be dismissed for failure to state a claim upon which relief could be granted — specifically, for failure to allege that registration or preregistration of the five copyright claims at issue had "been made" prior to the filing of this action, as required by Fourth Estate. See Docket No. 20. On March 12, 2019, Plaintiff filed an Amended Complaint and an attached exhibit in which it listed registration numbers for the (now nine) copyrights at issue, and — in a column labeled "Registration Date" — gave dates that, for six of the copyrights, preceded the filing of the original [*3]  Complaint. See Docket No. 21 ("Am. Compl."); id. at Exhibit B. That same day, Plaintiff filed a response to the Court's Order to Show Cause, stating that "the original complaint has now been amended so that it does allege registration of the five (5) initially complained of infringed films prior to the filing of this action." Docket No. 22, at 1 (citations omitted). Based on these representations and allegations, the Court denied the motion to quash on March 15, 2019, and allowed the case to proceed. See Docket No. 23.

Shortly thereafter, Defendant filed a motion for reconsideration, urging that Plaintiff's Amended Complaint succeeded only in alleging that its copyright applications had been filed — not approved — prior to November 23, 2018. See Docket No. 24. The Court thought enough of that argument to order Plaintiff to address it. Docket No. 25. In response to the Court's Order, Plaintiff filed a letter-brief making clear, for the first time, that the dates listed in Exhibit B to its Amended Complaint are the dates that Plaintiff filed its applications for the copyrights at issue — not the dates on which the Copyright Office formally registered the copyrights. See Docket No. 27, [*4]  at 1. Plaintiff explains that because a copyright registration, once approved, is retroactively "effective" from the date the application for that registration was filed, it had listed that "effective date" in the column labeled "Registration Date" in Exhibit B to the Amended Complaint. Id. Further, according to Plaintiff, the date on which the Copyright Office actually approved each registration is "not publicly available." Id. In other words, Plaintiff now concedes that the Amended Complaint alleges only the dates that Plaintiff applied for registration of the various copyrights at issue, and does not include any allegation or representation as to when the Copyright Office approved those applications. Thus, while the Court may infer that the Copyright Office completed registration of Plaintiffs' copyrights before the Amended Complaint was filed, it may not do the same with respect to the original Complaint.

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2019 U.S. Dist. LEXIS 56578 *; 2019 WL 1454317

MALIBU MEDIA, LLC, Plaintiff, -v- JOHN DOE subscriber assigned IP address, Defendant.

Prior History: Malibu Media, LLC v. Doe, 2019 U.S. Dist. LEXIS 42296 (S.D.N.Y., Mar. 15, 2019)Malibu Media, LLC v. Doe, 2018 U.S. Dist. LEXIS 207217 (S.D.N.Y., Dec. 6, 2018)


registration, registered, infringement, compliance, subpoena, cure