The Second Circuit Avoids the "Registration" Question

Although the Copyright Act explicitly provides that works must be registered before their owners can sue for infringement, the circuit courts have gradually adopted opposing interpretations of what exactly “registered” means. While some circuits do not permit copyright owners to sue until their work is officially registered with the Copyright Office, others allow owners to bring suit once their copyright application has been filed. The Second Circuit, however, has yet to articulate its position on the issue.

For example, last year, in A Star Group, Inc. v. Manitoba Hydro, KPMG LLP, a New York district court dismissed a claim of copyright infringement, pointing out that A Star Group's copyright application was still pending at the time the company filed suit. The court explained, “[a]t the time of filing the current complaint...[A Star Group] only had a pending application for registration and therefore did 'not satisfy the registration precondition of [the Copyright Act].'” A Star Group, Inc. v. Manitoba Hydro, KPMG LLP, 2014 U.S. Dist. LEXIS 88825 (S.D.N.Y. June 30, 2014).

Although the Second Circuit ultimately affirmed the dismissal, it sidestepped the registration issue, relying instead on the plaintiff's failure to state a claim for relief, and noting merely that “[o]ur Court has not yet determined, however, whether a merely pending application for registration satisfies the Act's requirement that a work be registered before a related infringement suit is filed.” A Star Group, Inc. v. Manitoba Hydro, 2015 U.S. App. LEXIS 12920 (2d Cir. July 27, 2015).

While the circuit courts’ conflicting views on this topic may not be considered the hottest topic in copyright law, this issue has practical significance for copyright owners and their attorneys. While we wait for clarity on this issue, copyright owners should obtain a registration before filing suit in an effort to avoid a motion to dismiss.