DO Denim, LLC v. Fried Denim, Inc.

District court in Second Circuit holds that plaintiff in a copyright infringement action must have received registration or denial of registration from U.S. Copyright Office before filing action for the court to have subject matter jurisdiction

Plaintiff filed suit for copyright infringement, trade dress infringement, trade dress dilution and unfair trade practices, alleging that defendant copied its design for denim clothing. Defendant moved to dismiss plaintiff’s copyright infringement claim for lack of subject matter jurisdiction because plaintiff applied for copyright registration but had not received a certificate of registration, or denial of registration, before filing suit. The court granted defendant’s motion to dismiss.

Section 411(a) of the Copyright Act provides “no civil action for infringement of copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.” 17 U.S.C. § 411(a).

The court noted that the Second Circuit has not squarely addressed the issue of when a copyright registration has “been made” for purposes of § 411(a), and that some circuits, and district courts within the Second Circuit, are split on the matter, with some courts finding that the mere filing of applications, fees and deposits is sufficient to constitute “registration” being “made” for purposes of the statute. However, this court thoroughly considered district court and circuit court decisions on this issue and found the reasoning in La Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005) persuasive, and held that plaintiff’s filing of the applications, fees and deposits did not satisfy the jurisdictional prerequisites of Section 411(a). According to the court, the plain language of the statute compels dismissal of plaintiff’s complaint: “The language, ‘required for registration,’ as used in the phrase, ‘the deposit, application, and fee required for registration,’ suggests strongly that the deposit, application and fee are prerequisites to registration and do not themselves constitute registration.”

The court also dismissed plaintiff’s trade dress claims because plaintiff failed to provide factual allegations showing that its design for jeans is nonfunctional.