Summary
dismissing copyright infringement claims for lack of subject matter jurisdiction because the claims did not allege that plaintiff had obtained certificates of registration
Summary of this case from GREENE v. COLUMBIA RECORDS/SONY MUSIC ENTERTAINMENT INCOpinion
00 Civ. 5686 (LAK)
July 23, 2001
ORDER
Following this Court's decision in Archie Comic Publications, Inc. v. DeCarlo, 141 F. Supp.2d 428 (S.D.N.Y. 2001), defendant filed amended counterclaims which (1) incorporated by reference the entire answer to the supplemental complaint, including the counterclaims previously dismissed by the Court, and (2) added two new counterclaims for copyright infringement. The counterclaim defendants have moved to strike those portions of the answer which reassert counterclaims previously dismissed and to dismiss the new counterclaims on the ground that the Court lacks subject matter jurisdiction. In the alternative, they seek a more definite statement with respect to the new counterclaims. Defendant cross-moves to stay the action.
1. The motion to strike is of a stripe properly characterized as dilatory. While the Court's prior decision stands, defendant no doubt incorporated the prior pleading as a means of signifying that he does not abandon the dismissed claims for purposes of appeal. The presence of those allegations in the pleading has no practical significance at the district court level. The motion to strike therefore has no practical purpose.
2. Counterclaim defendants' motion to dismiss the fifth and sixth (or new) counterclaims is well taken. In light of Section 411(a) of the Copyright Act of 1976, 17 U.S.C. § 411(a), "registration is a prerequisite to commencement of an action for copyright infringement." Robinson v. Princeton Review, 96 Civ. 4859 (LAK), 1996 WL 663880, *7 (S.D.N.Y. Nov. 15, 1996). The amended counterclaims nowhere allege that plaintiff has obtained certificates of registration for the allegedly infringed copyrights. Accordingly, the Court lacks jurisdiction over the subject matter of the fifth and sixth counterclaims.
3. Defendant suggests that the Court either stay the fifth and sixth counterclaims pending his application for and receipt of certificates of copyright registration or dismiss them "without prejudice to permit Mr. DeCarlo to pursue his breach of contract and any other available state law remedies in the New York State courts and to permit him to reinstate his amended counterclaims in due course after the copyright technicalities have been dealt with." (Def. Mem. 3) (emphasis in original).
There is no reason to stay the action. Indeed, it is entirely possible that the litigation of plaintiff's claim may result in the resolution of factual or legal issues that as a practical matter would be dispositive of defendant's copyright infringement claims. It would be unjust to counterclaim defendants to delay such a resolution. And if litigation of plaintiff's claims did not result in such a resolution, defendant would be no worse off than if a stay were entered because he then could pursue his infringement claims, assuming of course that he obtains certificates of registration.
Nor is there any reason to dismiss the counterclaims without prejudice to defendant pursuing claims in the state courts. And a dismissal on subject matter jurisdiction grounds grounded in the failure of the amended counterclaims to allege the ownership of registered copyrights would not preclude either a supplemental pleading in this action or an independent complaint (assuming arguendo that that would be appropriate) once certificates of registration were obtained.
Accordingly, counterclaim defendants' motion to dismiss the fifth and sixth counterclaims, to strike certain allegations, and for other relief [docket item 31] is granted to the extent that the fifth and sixth counterclaims are dismissed for lack of subject matter jurisdiction and denied in all other respects. Defendant's cross-motion [docket item 33] is denied in all respects.
SO ORDERED.